The use or development of intellectual property (IP) in performing government development contracts, supply contracts, cooperative agreements, or grants is a trap for the unwary, since applicable substantive law and procedural requirements differ markedly from their counterparts in the commercial world. Hogan & Hartson is a leader in guiding clients through this minefield. With the firm’s help, clients ranging from technology start-up ventures to large aerospace and defense contractors, to major research universities are able to benefit from federal funding while ensuring that their technology remains viable in the federal market and is adequately protected.

We advise contractors and grantees on all aspects of compliance with federal IP requirements, including: proper marking of proposals, data, and software; timely and complete identification of limitations on government rights; disclosure and protection of subject inventions; and validation of private IP rights. Hogan & Hartson teams have conducted major patent infringement litigation involving sales to the federal government. We have negotiated and drafted IP provisions both in government funding agreements and in subcontracts and grants. The firm has conducted IP audits for government contractors and grantees, and regularly performs due diligence on IP rights of target companies in merger transactions.

Our lawyers who focus on government IP issues also draw upon the experience of other lawyers in allied areas, such as patent prosecution, IP litigation, licensing, and information technology.

Related Experience

• We conducted a comprehensive IP audit for a developer and maintainer of satellite launch databases for public and nonpublic clients, involving numerous types of products and IP.
• On behalf of a leading system integrator, we conducted District Court patent infringement litigation and advised with respect to related Court of Federal Claims litigation against the federal government, involving mail sorting systems furnished to the U.S. Postal Service and other customers.
• We guided the leading advanced materials company in negotiating and protecting IP rights vis-à-vis other contractors and the Defense Advanced Research Projects Agency (DARPA) in a project to develop three-dimensional microelectronic radio frequency systems. 
• We advised a subcontractor/manufacturer on IP rights and protection for its portion of the U.S. military’s future airborne missile.
• We negotiated a unique sole source supply provision in a U.S. Department of Defense contract for the client’s anti-eavesdropping technology to be installed at the Pentagon.
• On behalf of a small business, we drafted and negotiated partnering agreements with fabricators and distributors to protect our client’s IP while supplying information security technology to government customers.
• We amended patents and patent applications, and prepared subject invention reports, to perfect our client’s patent rights in technology developed under government contracts and grants, so as to permit the company to be sold at full value.
• We litigated an appeal of a U.S. Navy contracting officer’s decision asserting a license to a sonar patent owned by a university client, and, after defeating the government motion for summary judgment, settled the matter by negotiating a license agreement under which the Navy would pay our client royalties for any future use of the invention.
• Using mediation, we settled a Federal Tort Claims Act/Administrative Procedures Act action in U.S. District Court against the U.S. Navy for misappropriation of IP relating to an aircraft “tie down” device, resulting in a substantial sole source contract award for our client.