Law - Contract or Grant Award(s)

Most contracts and grants awarded by the U.S. Government require reporting of inventions created or first actually reduced to practice during the contract or grant period. The Government typically has rights in such inventions. When a contractor or grantee retains the patent rights to an invention that was conceived or first reduced to practice under a U.S. Government contract or grant, the patent application must include a statement of Government rights in the invention. In most situations, an appropriate statement for disclosing Government rights will be generated by this software as follows:

"The U.S. Government has a paid-up license in this invention and the rights in limited circumstances to require the patent owner to license others on reasonable terms as provided for by the terms of [Contract No. or Grant No.] awarded by [Agency]."

For the above reasons, when an invention is created or first actually reduced to practice during the performance of a government grant or contract, the information requested above should be reported in an invention disclosure for each contract or grant award.

The position of the USPTO on this issue is described in the following section(s) of the Manual of Patent Examining Procedure (MPEP):

MPEP 310 - Government License Rights to Contractor-Owned Inventions Made Under Federally Sponsored Research and Development
MPEP 2138.05 - "Reduction to Practice"

Return to Home

© 1998-2003 Robert M. Hunter PLLC