Report Federally Funded Inventions or Risk Losing Patents

From Jane E.R. Potter:

"The U.S. Court of Appeals for the Federal Circuit has rendered a decision that highlights how important it is for recipients of federal grants and contracts to properly notify the appropriate funding agency of inventions developed pursuant to the contract or grant.

The decision, Campbell Plastics Engineering & Mfg., Inc., v. Les Brownlee, (C.A.F.C. Slip.. Op. 03-1515, Nov. 10, 2004) relates to a contract between a private company (Campbell) and the U.S. Army. Campbell entered into the contract for the purpose of developing components of a protective mask. The contract required that Campbell disclose any inventions to the government within a certain time period, and specified the procedure for disclosure.

Although the facts showed that Campbell had provided reports to the government from time to time, the formal notice requirements and procedures were not followed. As a result, the Army exercised its contractual right to take title to the patent once the patent issued."