Re: University's rights

Mary Pate <pate[_at_]invocon.com> wrote:
>
> Under government contracting principles, if a company receives a
> government contract and then wants to have a university do some work
> for it as a subcontractor or grant recepient, do I need to incorporate
> a "work-made-for-hire" clause with regards to the information that the
> university furnishes me in order to have the copyright to it?
>
> Also, suppose the federal agency that initially contracted my company
> to do the work specifically restricts publication/dissemination of any
> results obtained from the work, doesn't that clause flow down to the
> university as my subcontractor?

This may seem obvious, but the federal government's use of long lists citations to "clauses incorporated by reference" that the average company may not have on hand or know where to find, may make it worthwhile to emphasize that the company (or its counsel) should carefully review all the intellectual property provisions in its own government contract, including those not printed out in the contract documents, but simply incorporated by reference to regulatory provisions or to "clause books," before contracting (subcontracting) with anyone else, university or otherwise. Those provisions will state which of them must be incorporated into subcontracts. Failure to comply could result in government claims for breach of the prime contract. In addition, the company may want to incorporate others for business reasons.

Second, it is useful to note that a federal contract "Contract Data Requirements List" ("CDRL", pronounced "Seedral") may be attached to the contract rather than included in the Statement of Work or Schedule. Nevertheless, items listed therein are just as much deliverables as the other contract services or products.

When the government demands contracted-for software, patents or data, a subcontractor holding them may refuse to accept prime contract provisions, let alone the CDRL, even for more money, leaving the prime contractor defenseless against government claims.

The company should also note that there are federal civil and criminal false claims acts, the former providing for recovery of treble damages. Requests for payment, including those for progress payments, are deemed claims for under these statutes. Requests for payment made when the requester cannot produce the requisite deliverable data can thus lead to very expensive trouble or even pokey time.

• Will --

Will Simmons
<wsimmons[_at_]world.std.com> Received on Wed May 28 1997 - 17:33:20 GMT