Government Contractor and Grant Researcher Affirmative Defenses Against Patent Infringement

The Army Lawyer, Department of the Army Pamphlet 27-50-404, p. 139, 2007

13 Pages Posted: 1 Mar 2010 Last revised: 27 Jun 2014

Danielle M. Conway

University of Maine School of Law

Date Written: 2007

Abstract

Acquisition personnel are being tasked to keep pace with as well as innovate in the procurement and management of intellectual property assets for the benefit of the U.S. government. Practical and technical procurement and grant issues arise when the U.S. government undertakes research relationships with universities and private laboratories. These issues range from whether procurement regulations apply to agreements entered into between the federal government and contractors or grant recipients, to whether universities are performing research “on behalf of the government” in order to qualify for immunity from claims of infringement of intellectual property. The Federal District Court for the Middle District of North Carolina recently considered the latter issue in Madey v. Duke University. This case represents protracted litigation which began in 1995 involving claimed patent rights of a university researcher and alleged patent infringement based on unauthorized use of patented inventions by Duke University. The issues raised and addressed in the district court’s decision in Madey v. Duke University are significant to the U.S. government, specifically the Department of Defense’s research and technology innovation missions. Specifically, universities represent fertile ground for conducting cutting-edge basic and applied research. In fact, the research being done by university faculty and graduate students is often a major component in the federal government’s race to remain ahead of foreign governments in the development of dual-use technologies. Accordingly, Madey v. Duke University is an important case for government attorneys, acquisition/grant professionals, and technical managers to consider so that the U.S. government can better ensure that universities and their talented personnel remain willing and able to perform research under government contracts or federal grants, absent the specter of potential claims of intellectual property infringement.

Suggested Citation

Conway, Danielle M., Government Contractor and Grant Researcher Affirmative Defenses Against Patent Infringement (2007). The Army Lawyer, Department of the Army Pamphlet 27-50-404, p. 139, 2007. Available at SSRN: https://ssrn.com/abstract=1559375

Danielle M. Conway (Contact Author)

University of Maine School of Law ( email )

246 Deering Avenue
Portland, ME 04102
United States

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