Government Patents: Everything You Need to Know
Countless government patents are submitted annually; such patent applications are examined not only by the United States Patent and Trademark Office (USPTO) but also by such government departments as the Pentagon, National Security Agency, Department of Justice, and the Department of Homeland Security.3 min read
Countless government patents are submitted annually; such patent applications are examined not only by the United States Patent and Trademark Office (USPTO) but also by such government departments as the Pentagon, National Security Agency, Department of Justice, and the Department of Homeland Security. If a government body chooses to use the invention or idea, without prior approval from the patent holder, then that holder can in fact sue for compensation. But there are other statutory requirements when a government employee is seeking patent protection, particularly for federal, state, and even government contractors. Therefore, if the government employee has a new product or invention, he or she may be required to give over the rights to the government if certain criteria are met. The criteria is similar between federal and state employees, but it is reviewed on a case-by-case basis, as the totality of the circumstances are taken into account when determining whether or not the U.S. government has engaged in patent infringement against the patent holder.
Inventions of Federal Employees
Under federal law, protection rights of an invention created by federal employees will be in government hands if the invention was:
- Created during work hours when the employee was in fact working;
- Made using government resources, which can include funding, equipment, documentation, information, etc.; or
- Connected to the inventor’s (employee’s) official duties.
If the government doesn’t want to step in to file the patent application, then the appropriate department officials will need to permit the employee to do so. Even if the above criteria aren’t met, as a federal employee and inventor, you may still owe the government other rights, including royalty fees, non-exclusivity, etc. If, however, the government does in fact step in and take over the patent application for your invention, you will still earn roughly 15% of the profit from that invention.
Inventions of State Employees
Laws regarding state employee inventions are similar to that of the federal government. If you are a state employee, you’ll want to ensure that you are fully aware and knowledgeable regarding the specific state laws for the state you work in. Specifically, the state of Connecticut has ownership over state employee inventions if:
- The invention is made during the employee’s work hours;
- If the invention emerges from the examination and inquiry done while working for the state; or
- If the invention was developed with the help of state funding or having used the state’s materials, equipment, other state employees, etc.
Inventions of Government Contractors
Independent contractors fare better. Federal agencies might waive patent rights when entering into government contracts. If, however, you are a direct contractor with the federal government (and not working through a company that was awarded a government contract), then you’ll want to bring this up during the onboarding process so that you are aware of any hurdles you’ll have to go through.
While you, as a patent holder, can sue the U.S. government for patent infringement, the case itself must be filed in the Court of Federal Claims (CFC) and not the federal district court.
Jury trials are not provided.
The only remedies you can get are royalty fees for the government’s use of your invention.
28 U.S.C. § 1498 protects businesses that are contracted to do work for the U.S. Therefore, if the business itself has patent protection over an invention, the business can bring suit against the U.S. in the United States Court of Federal Claims for reasonable compensation.
The government argues that it should never be viewed as an infringer but rather a “sovereign” who will agree to offer monetary relief for the use of someone else’s patents. Therefore, the government cannot be held liable for infringing because no infringement occurred if the U.S. agrees to provide a royalty fee or additional monetary relief for the use of a patented product or idea.
If you need help with learning more about government patents or if you need assistance in applying for patent protection as a government employee, you can post your legal need (or post your job) on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.