Primer on Patentability and Use of Ideas Developed by Contractors Performing Work for State and Federal Transportation and Local Planning Agencies (2017) / Chapter Skim
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Pages 14-20
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From page 14... ...
14 is required to notify the federal funding agency of any notice or claim of patent infringement that is made against it,124 since any claim can only be prosecuted against the government in the U.S. Court of Federal Claims.
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From page 15... ...
15 and local transit agencies,135 allowing contractors for state and local transit agencies to elect to retain title to inventions made with FTA grant funds. Aside from the rulemakings in which FHWA and FTA adopted these respective patent policies, there is limited legal authority for the conclusion that the Bayh–Dole Act applies to USDOT grant funds in the hands of state and local transportation agencies.
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From page 16... ...
16 federal contracts do not automatically apply to grant funds, absent specific direction from Congress.144 Another potential implication of the Trinity decision, as discussed in more detail in the remainder of Section II, is that if contractors to state transportation agencies are federal subcontractors, then infringing contractors could assert statutory infringement defenses including immunity (as federal subcontractors) or license (if the federal government has acquired a license for use of the invention on its behalf)
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From page 17... ...
17 of a federal subcontract, relying on the Trinity court's earlier ruling that a university was a federal subcontractor when it received FHWA funds through a cooperative research agreement with TxDOT. However, the Trinity court declined to consider the argument, ruling that the defendants did not raise it in a timely manner.150 The better legal argument seems to be that state transportation agencies cannot take advantage of the license obtained by the federal government under the Bayh–Dole Act.
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From page 18... ...
18 effort involving 19 state transportation agencies. Under the arrangement, the state transportation agencies participating in the pooled fund study would obtain a paid-up license to use the MDSS, but Meridian would retain ownership of intellectual property, including the source code to any software, developed under the project.
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From page 19... ...
19 patent specification did not actually describe the claimed optimization method (probably because those algorithms had been developed by Meridian, the pooled fund contractor, and maintained by Meridian as proprietary)
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From page 20... ...
20 in loss of federal funding for the patented or proprietary technology. In addition to loss of federal funding, specifying patented or proprietary technology on federally funded contracts could also violate state procurement law, and could subject the state transportation agency to claims or litigation in state court.
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