IP Protection Checklist

1.      Under FAR 52.227-11(3), contractors only have one year during which valid patent protection can be obtained in the United States.

2.      If you are not able to file a regular patent application right away, you should file a provisional patent application as soon as possible to protect the IP. 

3.      According to FAR 52.227-11, Contractors must disclose (in writing) each subject invention to the Contracting Officer within 2 months after the inventor discloses it (in writing) to Contractor personnel responsible for patent matters (grants do not use FAR 52.227, but do use an equivalent document).

4.       Contractors must elect (in writing) whether or not to retain ownership of any subject invention by notifying the Contracting Officer within 2 years of disclosure to the agency [FAR 52.227-11]

5.      File a non-provisional patent application on the invention within one year of the provisional application (if applicable).

6.      File patent applications in selected foreign countries (of strategic interest) within ten months after the U.S. patent application.

7.      Make sure to inform the government of which foreign countries you intend to file patent applications as the government may take title in the countries in which you do not file.

8.      Notify the government of any decision not to continue to pursue a patent application on the invention in any country and that the government has certain rights of ownership in such applications.

9.      Provide the government with a copy of the patent application, as filed, and make sure to include the filing date.

10.  Include in the specification portion of any U.S. patent application the following statement:

                        “This invention was made with U.S. government support under ‘contract/ award/ grant no. XXX’ awarded by the ‘applicable government agency’.  The government has certain rights in this invention.”

11.  Provide the government with a copy of the issued patent when granted.

12.  Note that the U.S. government has certain rights in your invention and your contract/ award/ grant provides that you may adversely affect your title in the invention if you do not comply with the terms of the contract. 

13.  Specifically refer to your contract/ award/ grant number in all correspondence with the government regarding any patent matters.