We're having problems with Government use of a patented invention. This comes under 28 USC 1498. I hired an attorney in Washington familiar with such matters, filed an administrative claim for patent infringement against the agency, and waited. That was 22 months ago.
Since then, there's been one very brief reply from the agency, denying the claim and offering the opportunity to submit additional evidence. That was in July 2009. My attorney answered that within 30 days, providing substantial additional evidence and pointing out that the reply was legally insufficient. There's been no substantive reply to that yet, although my attorney has informally been promised a reply by the end of Q1 2010. (That deadline has low credibility. Back in 2008, we were promised, in writing, by the same attorney, a decision by the end of 2008. That decision didn't arrive until July 2009.)
We have requested mediation with a DoD mediator. The attorney for the agency has refused, claiming mediation would be 'premature'.
We've had help from a Congressional office. Even they get a runaround. The Congressional staffer I'm dealing with is very helpful, and has made several requests on our behalf. DoD 'lost' one for months (there was a written apology for that), and took weeks to reply to another, and then only with an acknowledgement.The congressional staffer tells me I may need a Senator on the Armed Services Commitee to get enough clout to make anything happen.
So far, I've spent about $15,000 in legal fees on this. We have solid evidence of infringement, from multiple published sources. The agency appears to be stalling because they don't have a good defense.
The next step is litigation in the Court of Federal Claims, but that would cost $1 million to $2 million. This claim isn't big enough for legal costs like that.
Administrative claims of patent infringement by the Government are handled entirely by the infringing agency. There's no hearing, no discovery, no neutral party, no time limits on the Government, and no administrative appeal. The process is very one-sided. Which is why this is so difficult.
We've done everything I and my attorneys can think of. I have very good legal representation, but the process is so one-sided that it doesn't help. There's no way to push this forward from the claimant side. Any ideas?
nagle,
It sounds like you and your attorney are taking all the steps you can take, given the difficult situation. If there is a watchdog group in your industry, they may have some insights.
nagle, It sounds like you and your attorney are taking all the steps you can take, given the difficult situation. If there is a watchdog group in your industry, they may have some insights.
NicoleD wrote: ... If there is a watchdog group in your industry, they may have some insights.
The National Defense Industrial Association has a committee working on intellectual property issues for small business. They have a PowerPoint presentation on IP issues that's painful to read. There's a worse situation than we're in - being a subcontractor on a DoD contract, having a prime contractor take your intellectual property under 28 USC 1498, and being afraid to raise the issue for fear of being locked out of future contacts. I've talked to the head of that NDIA commitee. They're doing a survey, but are scared to do more than that.They're trying to get up the nerve to write a letter to the Under Secretary of Defense (Acquisition, Technology & Logistics).
From the NDIA PowerPoint:
'Since the prime is your customer, you really have little recourse in trying to assert your rights in IP. If you don't concede to the prime's demands, you won't get the work'.
'We raised issue - but they took our IP anyway'.
'We designed and built bid samples of our technology for a large prime used in their bid for an Army contract, only to be informed after they won that they would be making the accessory themselves, despite our having a valid patent, because the FAR 52.227'.
'Government is doing everything it can to steal the IP'.
That's what it's like as a DoD subcontractor with patented technology.
The law in this area is a legal anomaly. It's unusually favorable to DoD, because the law was passed in a frantic hurry near the end of World War One, when a patent dispute shut down production of some component needed for steam turbines for warships. Within weeks, Congress passed what's now 28 USC 1498, with it's 'take the IP now, let the patent holder sue later' approach.
It's been suggested that we should be the 'poster child' for publicity of this issue, because we're not a Government contractor. Our technology is from the commercial sector. So we're not vulnerable to reprisals from prime contractors or agency acquisition staff. We may have to go public with this. I have good press contacts, a good reputation in Silicon Valley, and can do that.
It looks like that's the way this is headed.
---
This post was edited to remove a commercial link. Read our discussion policies for more Community best practices.
Message Edited by ChristineL on 02-09-2010 09:04 AM
NicoleD wrote: ... If there is a watchdog group in your industry, they may have some insights.The National Defense Industrial Association has a committee working on intellectual property issues for small business. They have a PowerPoint presentation on IP issues that's painful to read. There's a worse situation than we're in - being a subcontractor on a DoD contract, having a prime contractor take your intellectual property under 28 USC 1498, and being afraid to raise the issue for fear of being locked out of future contacts. I've talked to the head of that NDIA commitee. They're doing a survey, but are scared to do more than that.They're trying to get up the nerve to write a letter to the Under Secretary of Defense (Acquisition, Technology & Logistics). From the NDIA PowerPoint: 'Since the prime is your customer, you really have little recourse in trying to assert your rights in IP. If you don't concede to the prime's demands, you won't get the work'. 'We raised issue - but they took our IP anyway'. 'We designed and built bid samples of our technology for a large prime used in their bid for an Army contract, only to be informed after they won that they would be making the accessory themselves, despite our having a valid patent, because the FAR 52.227'. 'Government is doing everything it can to steal the IP'.That's what it's like as a DoD subcontractor with patented technology. The law in this area is a legal anomaly. It's unusually favorable to DoD, because the law was passed in a frantic hurry near the end of World War One, when a patent dispute shut down production of some component needed for steam turbines for warships. Within weeks, Congress passed what's now 28 USC 1498, with it's 'take the IP now, let the patent holder sue later' approach. It's been suggested that we should be the 'poster child' for publicity of this issue, because we're not a Government contractor. Our technology is from the commercial sector. So we're not vulnerable to reprisals from prime contractors or agency acquisition staff. We may have to go public with this. I have good press contacts, a good reputation in Silicon Valley, and can do that. It looks like that's the way this is headed. ---This post was edited to remove a commercial link. Read our discussion policies for more Community best practices. Message Edited by ChristineL on 02-09-2010 09:04 AM
IP issues are always fraught with peril and often end up in protracted legal battles, whcih most people cannot afford to fight. The gov however has very deep pockets so if they're willing to try hard enough you're probably not going to win long term.
IP issues are always fraught with peril and often end up in protracted legal battles, whcih most people cannot afford to fight. The gov however has very deep pockets so if they're willing to try hard enough you're probably not going to win long term.
We've been contacted by some other parties in similar situations. If you're in this situation, a useful person to contact is Allison Brown, the head of the National Defense Industrial Association's committee on IP isses. She's been tracking this.
We've been contacted by some other parties in similar situations. If you're in this situation, a useful person to contact is Allison Brown, the head of the National Defense Industrial Association's committee on IP isses. She's been tracking this.
Nagle... Glad to hear that it sounds like you are making progress on this. Have you considered though using the outlet of media? This sounds like a particularly interesting story that an outlet (TV evening news?) might like to cover - especially if you are able to provide them (without compromising your case) with the evidence you say you have against the DoD. In my area we have a kind of 'News 5 on Your Side' thing where you can submit stories like this for them to investigate and report on. In your case, it might be a better idea to go straight to a DC media outfit. Even perhaps going through some kind of affordable PR firm to get through to the media there if necessary - to get your story out.
It is sad when you have to 'know people' (like a Senator) to get obvious legal results like this.
Good luck.
NicoleD | Former Moderator | 2/8/2010 - 12:00 pm
nagle | Performer | 2/8/2010 - 12:59 pm
mrhelpful | Contributor | 6/24/2010 - 11:53 pm
nagle | Performer | 9/8/2010 - 1:32 pm
WorkAtHomeMom | Window Shopper | 9/14/2010 - 5:21 pm
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