Jump to content
The Wifcon Forums and Blogs
Sign in to follow this  
anonymous 10

Data Rights under an SBIR contract

Recommended Posts

Hello, this is my first time posting a question.  I currently work in for a small business and formerly worked for the Department of Defense.

One of the benefits of the Small Business Innovation Research (SBIR) program is SBIR Data Rights to the intellectual property that is generated during the term of the contract.

My understanding has always been that this flows down to subcontractors.  By "this," I mean the intellectual property generated during the term of the contract, not any existing intellectual property.

FAR 52.227, in paragraph (d), and DFARS 252.227-7018, in paragraph (b)(4), are pretty clear that the Government receives SBIR Data Rights to the intellectual property generated during the term of the contract, regardless of whether the contractor or the subcontract does the generating.  The question I'm struggling to answer is whether or not the contractor owns any of the intellectual property generated by the subcontractor during the term of the subcontract?  It does not appear that either of the above mentioned clauses contain the answer.

 

Share this post


Link to post
Share on other sites

Para. (d) of the clause at FAR 52.227-14 does not any assign data rights to the Government.  Is para. (h) helpful to you?

The clauses you mention identify the Government's rights in data.  But consider:  Even if the Government has unlimited rights to data, might the contractor also have unlimited rights to the same data?  Unlimited does not mean exclusive.

Allocation of data rights in subcontracts should be addressed in subcontracts.

Share this post


Link to post
Share on other sites
11 hours ago, anonymous 10 said:

The question I'm struggling to answer is whether or not the contractor owns any of the intellectual property generated by the subcontractor during the term of the subcontract?

Ownership of data is different from rights to use that same data.  Note that under the FAR and DFARS, the government does not own data generated by a contractor.  Instead, the government only gets specified rights in that data.  Unless the contract states otherwise, the contractor continues to own data.  As for ownership of data originated by a subcontractor, that is a matter between the prime and sub.  I have seen subcontracts where the prime requires its subs to transfer ownership of data to the prime and other subcontracts where the prime does not require such transfer of ownership.

Share this post


Link to post
Share on other sites

  DOD noncommercial and computer software SBIR data rights clause 252.227-7018 (k)(4) states: "The Contractor and higher tier subcontractors or suppliers shall not use their power to award contracts as economic leverage to obtain rights in technical data or computer software from their subcontractors or suppliers." Therefore, it appears to be overreaching to obtain ownership of such data. Generally, it seems to me it includes technical data or computer software conceived, developed, or first reduces to practice by, for, or with subcontractor, either alone or with others, in performance of the contract.     

Share this post


Link to post
Share on other sites
Guest Vern Edwards
On 9/6/2018 at 3:50 AM, anonymous 10 said:

The question I'm struggling to answer is whether or not the contractor owns any of the intellectual property generated by the subcontractor during the term of the subcontract? 

@anonymous 10

Does the contractor "own" the intellectual property generated by the subcontractor?

NO!

Of course not. Unless, of course, the contractor and the sub have made an agreement to that effect.

Have they made an agreement to that effect?

Contracts are about what people agree to.

And, as Neil said, there is a difference between ownership and rights to use and share. See https://seedcamp.com/resources/understanding-intellectual-property-ownership/

Now, if you work for someone in the research business, please take an online course in intellectual property law, e.g.

https://law.unh.edu/academics/online-programs/intellectual-property-online-program

https://www.class-central.com/tag/intellectual property

or buy and read Patents, Copyrights, and Trademarks for Dummies. It will serve you well.

Share this post


Link to post
Share on other sites

The SBIR.gov site appears to discus the OP's question but the OP has not logged in since last Wednesday and may have abandoned the question.

Quote

QUESTION 5:   I  have funding from the National Oceanic and Atmospheric Administration (NOAA) and I’m using a subcontractor to help design my technology. Does the flow down of SBIR data rights give them an ownership position in the technology?

Now, this is from a tutorial and not a contract.  The SBIR.gov answer is here under Question 5.

Share this post


Link to post
Share on other sites
Guest Vern Edwards
On 9/6/2018 at 3:50 AM, anonymous 10 said:

The question I'm struggling to answer is whether or not the contractor owns any of the intellectual property generated by the subcontractor during the term of the subcontract?

I don't see how the info at the SBIR.gov site answers the question whether the prime gets ownership of its sub's work product. Did I miss it?

Share this post


Link to post
Share on other sites
Quote

The subcontractor owns the SBIR Data that it generates, and the SBIR firm owns the SBIR Data that it generates. (The government owns none of it, but rather obtains a license to use it.) Thus, be very careful about involving subcontractors during the development stage of SBIR technologies, to assist in developing the technology. This may lead to expensive redevelopment of the subcontractor portion later, or paying ransom to the subcontractor later to retrieve full ownership of the technology.

As I mentioned, the information at SBIR.gov is from a tutorial and not a contract.  It also may depend on the stage of the SBIR, I have no idea. 

(Edit)  I said that on the SBIR site it

Quote

appears to discus the OP's question

If I cared about the ownership, I would go back to the law and see what it says.  

Share this post


Link to post
Share on other sites
Guest Vern Edwards
20 hours ago, bob7947 said:

If I cared about the ownership, I would go back to the law and see what it says. 

Which law?

Share this post


Link to post
Share on other sites
1 hour ago, PepeTheFrog said:

Was this preceded by a showdown at high noon at the O.K. Corral?  Or a beat-em-up, shoot-em-up at the local watering hole?

 

Maybe somebody wrote something that hurt his feelings.

Share this post


Link to post
Share on other sites
2 hours ago, Don Mansfield said:

Maybe somebody wrote something that hurt his feelings.

Regardless of the reason for his separation, I wish Mr. Edwards the best of luck on his future endeavors. For many years he has been both a role model and source of truth, and I will miss his contributions to this group.

Share this post


Link to post
Share on other sites

Frog:

Quote

Was this preceded by a showdown at high noon at the O.K. Corral?  Or a beat-em-up, shoot-em-up at the local watering hole?

When I started this site in July 1998, Vern was there, when I took this site commercial in 2008, Vern was there.  For those and many other reasons, it is inconceivable that Vern and I (Wifcon.com) could part on less than the most cordial of terms.  I know why he left and I respect his wishes.

Share this post


Link to post
Share on other sites

Join the conversation

You can post now and register later. If you have an account, sign in now to post with your account.

Guest
Reply to this topic...

×   Pasted as rich text.   Paste as plain text instead

  Only 75 emoji are allowed.

×   Your link has been automatically embedded.   Display as a link instead

×   Your previous content has been restored.   Clear editor

×   You cannot paste images directly. Upload or insert images from URL.

Sign in to follow this  

×
×
  • Create New...