Proposed Changes Could Affect Intellectual Property Rights in Federal Contracts
September 27, 2001
A proposed modification to the Federal Acquisition Regulation would require
contractors to receive government permission before registering or asserting
rights in "government-unique" trademarks and service marks. For
purposes of the rule, a government-unique mark is a mark that identifies goods
first developed or manufactured or services first rendered in the performance of
a government contract.
The proposed regulation, published in the August 9, 2001 Federal Register,
would require a contractor to notify the government of its intent to assert
rights in or to file an application to register a government-unique mark. The
contractor would be prohibited from exercising its rights in the mark if the
government chooses to assert rights in or register the mark or otherwise objects
to the contractor’s intended action. The government also might condition the
contractor’s ability to assert its rights to the mark by requiring licensing
of the use of the government-unique mark to third parties and by limiting the
contractor’s use of the mark.
Comments on the proposed rule are due on or before October 9. However,
initial reaction of the proposal has not been favorable. Some commentators
consider it inappropriate for the federal government to assert ownership rights
in the trademarks. Others find the rule to be too broad and contrary to the
government’s avowed intention of encouraging more commercial companies to
enter the federal arena.
On another front, in July, Representative Tom Davis (R-Va) chaired a hearing
of the House Government Reform Subcommittee on Technology and Procurement
Policy. The Subcommittee heard testimony from government and industry
representatives on whether current policies on the treatment of intellectual
property rights in federal contracts discourage commercial companies from doing
business with the federal government. It is doubtful that any major legislation
to change the current framework for allocating intellectual property rights will
be forthcoming in the near future. However, there may be some minor changes to
the Bayh-Dole Act that will give government officials more flexibility in
negotiating patent rights.
For more information, contact Frank Peterson at 1-888-688-8500 or via e-mail
at fpeterso@hklaw.com.