The Key to SBIR Data Rights - Just Mark It!
CONGRATULATIONS! You won an SBIR or STTR Phase I contract. Maybe it is your 1st … and maybe it is your 101st.
VERY COOL!
WHERE else does the Government pay for R&D, AND … YOU, the Contractor, receive exclusive intellectual property rights?
AS LONG AS YOU PROTECT YOUR DATA!
HOW? By MARKING your research … with very specific language.
WHEN do you mark it? ALWAYS! “…each and every time you present…” the data to the government AND to other contractors!
WHY? Because if you don’t - even just once -
“…you can unintentionally abrogate these rights…”
Fred Patterson, The SBIR Coach, said it best in his February 2009 issue of The SBIR Coach’s Newsletter: http://archive.constantcontact.com/fs082/1102224430530/archive/1102463451755.html.
What he wrote is still as pertinent and important today as it was 7+ years ago. I’m providing you with excerpts from his article because he explains it excellently. Giving it to you straight – Fred and I have your best interests in mind. Here’s Fred:
"To My SBIR Clients and Friends,
We all know that SBIR provides grant money for technology development. But it also provides special opportunity for doing related follow-on business with the Federal Government, and for protecting your intellectual property from disclosure.
In our November 2008 Newsletter we talked about how having a Phase I or Phase II project qualifie[s] you as "sole-source justified" for all follow-on projects -- called Phase III.
In addition to the sole-source justification, a significant SBIR advantage is the protection of all information produced in the course of the project as intellectual property under what are called "SBIR Data Rights". These rights derive to you automatically, BUT you must take special measures to inform the Government which information is to be so protected, each and every time you present it to them. (Emphasis added.)
How Do You Protect Your SBIR Data Rights?
One of the hallmarks of the SBIR Program is the intellectual-property protection provision that provides the SBIR awardee with the retention of the rights to data generated in the performance of an SBIR award.
What this means is that, unlike with most government programs where the government pays for the development work, you, the small business concern, get to keep the rights to any new IP created during the SBIR period of performance. And these rights also apply to STTR awards, with the additional proviso that your IP-sharing agreement with your research institution partner also is in effect. Unfortunately, these rights don't last forever - five years for DOD, four years for civilian agencies. Moreover, you can unintentionally abrogate these rights by failing to properly mark your deliverables, including all reports and briefing materials you provide to your contract officials. (Emphasis added.)
In your SBIR or STTR contract …, you'll find reference to clause DFARS 252.227-7018. This clause specifies the proper marking (wording) that should accompany all information provided to the Government relating to your work on your SBIR project. If you don't properly mark the title page of any briefing or report, and if you don't tag anything that you provide to the government, you are in jeopardy of forfeiting your rights to the data associated with that deliverable. (Emphasis added.)
I strongly recommend that you review this clause. (You can find a copy of the full wording at: [NOTE: Replaced link originally provided with current website: https://www.acquisition.gov/dfars/252.227-7018-rights-noncommercial-technical-data-and-computer-software%E2%80%94small-business-innovation-research-sbir-program].)
And I recommend you include the following marking (and fill in the appropriate information) on the title page of a report or briefing, or on a tag attached to a deliverable item:
SBIR DATA RIGHTS
- Contract Number: ________________________________________________
- Contractor Name: ________________________________________________
- Contractor Address: _______________________________________________
- Expiration of SBIR Data Rights Period: ________________________________
The Government's rights to use, modify, reproduce, release, perform, display, or disclose technical data or computer software marked with this legend are restricted during the period shown as provided in paragraph (b)(4) of the Rights in Noncommercial Technical Data and Computer Software-Small Business Innovative Research (SBIR) Program clause contained in the above identified contract. No restrictions apply after the expiration date shown above. Any reproduction of technical data, computer software, or portions thereof marked with this legend must also reproduce the markings.
[End of Marking Language]
The "Contractor" is you. The "Contract Number" is just that, not the SBIR topic number. The "SBIR Data Rights Period" expiration date for a DOD contract is five years after the scheduled date of the final deliverable of the contract. [It’s four years for civilian agencies.] Note that follow-on projects, be they Phase II or Phase III, will extend the data rights period to an appropriate point after the end of that follow-on project.
Even though the law provides for protection of your rights to the data you create in your SBIR work, by contract law, if you don't tell the government what data falls under the provisions of that protection, the government is not obligated to protect it. You tell the Government by properly marking the data, and it's up to you to remember to do it. (Emphasis added.)
If you don't believe that you have an exposure here, take a lesson from the court decision in Night Vision Corporation's data-rights battle with the Air Force. In a nutshell, Night Vision lost rights to its technology by failing to mark a prototype of the goggles it had created in Phase II when the company delivered the goggles to the Air Force. The Air Force turned over the prototype to a competitor for reverse engineering and issued the competitor a contract to manufacture the goggles. Night Vision sued and lost.
So why is it so important to protect your technical data? There are two basic reasons. (1) The agency cannot disclose your SBIR data to your competitors during the protection period. And (2) the agency cannot use your SBIR data to develop technical specifications for purposes of competing a procurement, and must award procurements based upon it to you on a sole-source basis.
That should be enough incentive to do a good job with your markings. Remember to mark everything you provide. You never know when a piece of data will prove to be the key to your future success."
Thank you, Fred Patterson – I found your article insightful. I hope it helps the people I reach.
To all SBIR and STTR awardees – Please. Mark. Your. Research.
YOU should reap the benefits from YOUR genius work, paid for by the Government.
Mark your reports.
Mark your briefings.
Mark the CDs that store your reports and briefings.
Mark your prototypes.
Mark your software – use a splash screen.
For all of your SBIR and STTR work product, channel Nike …
Just Mark It!
Keep track of your SBIR and STTR awards. For a free intellectual property tracking template based on federal regulations, contact info@opes360.com.
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About the Author
Angelique brings over 20 years of cradle-to-grave federal contracting experience.
“Bridging the gap between the often drab administration and the allure of scientific exploration to make way for innovation is what I do best. Strategically guiding my clients through creative conversations allows them to develop the streamlined systems and power partnerships required to achieve optimal results.”
~ Angelique S. Dimmick, Founder and Strategist
