Intellectual Property
Within the DoN OGC framework, it is the
responsibility of DoN Intellectual Property attorneys to provide timely advice
and counsel on all areas of intellectual property affecting the development,
use, and life cycle maintenance of all Navy ships, aircraft, satellites, and
other weapons systems being used or supported by the DoN or its foreign
strategic partners, and the transfer of federally owned technology. As a result,
in addition to its traditional role of acquiring patents on important DoN
inventions, the DoN’s Intellectual Property attorneys will address other areas,
such as, acquiring sufficient trade secret and copyright licenses from
contractors to allow the DoN to support its weapons systems, resolving claims of
DoN infringement of patents, assisting the Department of Justice in cases
involving intellectual property, and drafting custom patent, copyright, and
trademark licenses. In addition, the DoN Intellectual Property attorneys are
involved in international intellectual property protection regimes and such
emerging areas as domain name disputes, e-commerce, and newer forms of
intellectual property protection. In short, the DoN Intellectual Property legal
community provides timely and informed counsel on both traditional and cutting
edge intellectual property issues affecting the DoN in the world today.
The responsibilities of a DoN Intellectual Property attorney depend upon whether
that attorney works at a Systems Command, Research Command, or Warfare Center
that conducts research. Since the purpose of a Systems Command is to purchase
and maintain weapon systems for use within the DoN, the work of the Intellectual
Property attorney is largely focused on the transactional side of the practice.
As a result, the DoN OGC Intellectual Property attorney will largely concentrate
on aiding the Systems Command in developing a strategy for a particular weapons
system, drafting licenses based upon this strategy, and enforcing those licenses
to protect the strategy. In addition, as a user of cutting edge technology, the
DoN OGC Intellectual Property attorney is reviewing, evaluating, and settling
claims alleging infringement of third-party owned intellectual property. If DoN
infringement is alleged, the Intellectual Property attorney will assist the
Department of Justice in defending the lawsuit. Additionally, the Intellectual
Property attorney updates the Systems Command on the latest changes in the law
that affect its operations and develops solutions to the challenges posed by
those changes. The Intellectual Property attorney will also prosecute and
prepare patent and trademark applications and generally obtain intellectual
property as needed by the Systems Command.
In contrast to the Systems Commands, the Warfare Centers develop the next
generation of technology to be integrated into or replace existing weapons
systems. As a result, instead of focusing on transactional work, the DoN OGC
Intellectual Property attorney working at the Warfare Center will focus on both
protecting DoN-developed intellectual property and maximizing the use of the
DoN’s existing intellectual property. This focus requires the Intellectual
Property attorney to actively prosecute patent applications on DoN inventions
and then aid in transferring this protected technology to industry. However, the
DoN OGC intellectual property attorney frequently becomes involved in
intellectual property issues arising under Research and Development contracts,
such as, rights in inventions, copyrights and technical data. Currently, the DoN
leads the Federal Government by securing approximately 350 patents each year.
The DoN Intellectual Property attorney will also review and draft licenses,
contracts, and agreements for transferring technology to the private sector. The
DoN Intellectual Property attorney will also advise the Warfare Center on new
forms of intellectual property that might be useful in maximizing the DoN’s
investment in research. Lastly, as at a Systems Command, when a third party
files a claim or lawsuit alleging that the Warfare Center is improperly using
the third party’s intellectual property, the DoN OGC Intellectual Property
attorney either reviews, evaluates, and settles the claim, or assists the
Department of Justice in defending the lawsuit.