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.