# Presentation: 141725

## Intellectual Property Issues & Scientific and Technical Information 

**Intellectual Property Issues & Scientific and Technical Information**** **

*Gary Drew **DOE Patent Counsel **April 21, 2005*

***STIP Meeting***

## Agenda

- Government Copyright Licenses
- Copyright of Scientific and Technical Articles
- Copyright of Software and Other Data
- Copyright of Open Source Software
- Other types of OSTI Reports
- Other Issues Related to STI

## Government Copyright Licenses

- There are two types of Government Use Licenses for Copyrighted works:
- 	1)	A “narrow” Government License where the Contractor grants to the 	Government, and others acting on its behalf, a paid-up, nonexclusive, 	irrevocable, worldwide license in such copyrighted data to reproduce, 	prepare derivative works, and perform publicly and display publicly, 	by or on behalf of the Government.
- 	2) 	A “broad” Government License where the Contractor grants to the 	Government, and others acting on its behalf, a paid-up, nonexclusive, 	irrevocable, worldwide license in such copyrighted data to reproduce, 	prepare derivative works, **distribute copies to the public**, and 	perform publicly and display publicly, by or on behalf of the 	Government.

## Scientific and Technical Articles

- M&O Contract Provision
- Rights in Data—Facilities (DEAR 970.5227-1)*
- 	a)	Please note that very few M&O Contracts have
- 		this clause
- 	b)  No right to assert copyright in any data.
- 	c)  Must seek “prior written authorization of the Patent
- 	     Counsel to assert copyright”
- 	d)  DOE would most likely grant such permission and
- 	     may modify this M&O Contract clause to allow
- 	     such copyright without permission if volume of
- 	     articles to publish justifies the change.
- *the DEARS are found at 48 CFR 970.5227-1

## Scientific and Technical Articles (cont.)

- II. Rights in Data-Technology Transfer  (DEAR 970.5227-2 )
- a)  Contractor has right to assert copyright in the article when:
- 	i)  Article contains data first produced in the performance
- 	     of the contract; and
- 	ii)  published in academic, technical or professional journals,
- 	     symposia, proceedings, or similar works
- b)  Contractor does not need prior approval from DOE    Contracting Officer
- Contractor grants Government a Broad Government License
- (see DEAR 970.5227-2 paragraph (d)(1))

## Scientific and Technical Articles (cont.)

- M&O Contract Provisions (cont.)
- d)  When data (the article) is delivered to the Government or published or deposited for registration as a published work in the US Copyright Office:
- 	i)  Contractor shall affix applicable copyright notice
- 	     (17 USC 401 “visually perceptible copies” or
- 		  17 USC 402 “phonorecords of sound recordings”) and
- 	ii)  Contractor shall acknowledge Government sponsorship
- 		 (including contract number)
- (see DEAR 970.5227-2 paragraph (d)(1))

## Scientific and Technical Articles (cont.)

- M&O Contract Provisions (cont.)
- e)  The Contractor shall mark each scientific or technical article...submitted for journal publication...with a notice...on the front reflecting the Government’s non-exclusive, paid-up, irrevocable, world-wide license:
- 	Notice: This manuscript has been authored by [insert the name of the Contractor] under Contract No. [insert the contract number] with the U.S. Department of Energy. The United States Government retains and the publisher, by accepting the article for publication, acknowledges that the United States Government retains a non-exclusive, paid-up, irrevocable, world-wide license to publish or reproduce **the published form** of this manuscript, or allow others to do so, for United States Government purposes.
- (see DEAR 970.5227-2 paragraph (d)(2))

## Scientific and Technical Articles (cont.)

- M&O Contract Provisions (cont.)
- There is no requirement in the DEAR clause to put a Disclaimer on the article submitted to the publisher.  However, the OSTI guide DOE G 241.1-1A at 5.2.5 states that “in accordance with Federal law and the guidance of appropriate legal counsel, disclaimer(s) are to be included where appropriate.”  Therefore, Contractor’s legal counsel should be consulted on adding a modified version of the following disclaimer recommended for technical reports, which is found in Attachment 6 of the OSTI guide:

## Scientific and Technical Articles (cont.)

- 	**FULL LEGAL DISCLAIMER**
- 	This report was prepared as an account of work sponsored by an agency of the United States Government. Neither the United States Government nor any agency thereof, nor any of their employees, nor any of their contractors, subcontractors or their employees, makes any warranty, express or implied, or assumes any legal liability or responsibility for the accuracy, completeness, or any third party’s use or the results of such use of any information, apparatus, product, or process disclosed, or represents that its use would not infringe privately owned rights. Reference herein to any specific commercial product, process, or service by trade name, trademark, manufacturer, or otherwise, does not necessarily constitute or imply its endorsement, recommendation, or favoring by the United States Government or any agency thereof or its contractors or subcontractors. The views and opinions of authors expressed herein do not necessarily state or reflect those of the United States Government or any agency thereof.

## Scientific and Technical Articles (cont.)

- So what does this mean?
- Contractor may transfer or license copyright to publisher if necessary.
- DOE retains the broad license of the original work, which means the version created by the Contractor can be distributed to the public via OSTI
- There are three types of documents to be discussed:
- 		1)  The original manuscript
- 		2)  The peer-reviewed version
- 		3)  The journal article (and journal reprints)

## Scientific and Technical Articles (cont.)

- DOE receives the right to reprint the final version, which contains the peer review changes (the peer-reviewed version), **only for Government purposes**.
- 	1) The Scientific and Technical Information Advisory Board
- 		(The STIA Board) has not yet made any DOE policy
- 		allowing the distribution of peer-reviewed version to the
- 		public.  Further, this STIA Board has not determined
- 		whether peer-reviewed version or the journal reprints
- 		(version published in journal) can be freely distributed
- 		within the Government Agencies or Government
- 		 Laboratories.
- 	2) It is DOE IP Counsel’s interpretation that OSTI’s mission
- 		of disseminating scientific research would include
- 		distributing the peer-reviewed version within the 	Laboratories and to the public.

## Scientific and Technical Articles (cont.)

- Peer-Reviewed Version (cont.)
-     3)  NIH’s National Library of Medicine (NLM)   	(_[http://www.nlm.nih.gov](http://www.nlm.nih.gov/)_)
- This site is run by that National Institute of Health to enhance public access to archived publications resulting from NIH-funded research.
- Beginning May 2, 2005, NIH-funded investigators are requested to submit to NLM’s PubMed Central (PMC) an electronic version of the author's final manuscript upon acceptance for publication.
- The author's final manuscript is defined as the final version accepted for journal publication, and includes all modifications from the publishing peer review process.

## Scientific and Technical Articles (cont.)

- The policy is intended to:
- 	a) create a stable archive of peer-reviewed research publications resulting from NIH-funded research to ensure the permanent preservation of these vital published research findings;
- 	b) secure a searchable compendium of these peer-reviewed research publications that NIH and its awardees can use to manage more efficiently and to understand better their research portfolios, monitor scientific productivity, and ultimately, help set research priorities; and
- 	c) make published results of NIH-funded research more readily accessible to the public, health care providers, educators, and scientists.
- The STIA Board is presently exploring whether OSTI
- 	should adopt a similar distribution policy.

## Scientific and Technical Articles (cont.)

- Contractor should have procedure where the lab employee submits proposed paper to the lab to receive patent counsel’s review for patentable information.
- 	970.5227-10(c)(5) Publication Approval. ...Contractor or its employees may desire to release or publish information regarding scientific or technical developments conceived or first actually reduced to practice in the course of or under this contract. In order that public disclosure of such information will not adversely affect the patent interest of DOE or the Contractor, approval for release or publication shall be secured from the Contractor personnel responsible for patent matters prior to any such release or publication.
- 	(Please note that this version is for M&O Contractors that are nonprofit organizations—there is a similar requirement in ‘for profit’ M&O contractors in DEAR 970.5227-12)

## Scientific and Technical Articles (cont.)

- Contractor should have procedures where the lab employee submits articles to be deposited at OSTI concurrently with publication in journals.
- When the employee’s research is funded by both DOE (or other Government) funding and private sector (University, State grants, etc.), the M&O Contract provisions for copyright apply unless there is an over-riding provision (as CRADA or WFO provisions) restricting the release of the data.
- If any data, which is copyrighted by other sources, is to be incorporated into the article, the Contractor MUST receive prior permission or obtain a no cost license to such copyrighted data.  See DEAR 970.5227-2 (c)(2)

## Scientific and Technical Articles (cont.)

- What is OSTI looking for:
- OSTI prefers the original unpublished form of the text, which can be used in full-text without restrictions.
- If only a journal reprint is available and it is copyrighted by the publisher, the Contractor should mark form DOE F 241.1 indicating that the journal article type is an “Announcement citation only”.
- If only journal reprint is submitted, OSTI presently does not process or make the reprint itself available, but will announce it and cite availability from the publisher.  However, this policy may change when the STIA Board makes recommendations to change DOE policy for releasing              peer-reviewed versions.

## Copyright of Software or Other Data

- The Contractor must seek DOE’s Patent Counsel approval (or DOE Contracting Officer if the authority is not delegated to DOE Patent Counsel) to assert copyright in software and other technical data (such as technical drawings).
- The Government retains a Narrow Government License in the software for 5 years.
- A deposit in OSTI of the source code, object code, abstract and supporting documentation as required on form DOE F 241.4.

## Software or Other Data Copyright (cont.)

- The Contractor can seek additional 5 year periods to extend their licensing activities.  DOE grants  these extensions “based on the standard that the work is still commercially available and the market demand is being met.”  The lab should show that one of these criteria exists:
- 		a)  the Laboratory has at least one active license; or
- 		b)  the Laboratory is actively attempting to license the 	     software.
- When the five year period (and any extensions) expires, the Government’s license reverts to a Broad Government License.

## Open Source Software (OSS)

- Most M&O Contracts have this provision
- Contractor can assert copyright without DOE Patent Counsel approval.
- Contractor must maintain records regarding DOE Program approval
- OSTI requires notice via form DOE F 241.4, where the Contractor identifies the URL link (Part II.B).  Therefore, the source code, object code and supporting documentation does not need to be submitted to OSTI _unless_ the Contractor decides to abandon the OSS and close the link.

## Other Types of OSTI Reports

- I.  CRADA Reports: Article XI: Reports and Abstracts
- 	At a minimum, the CRADA requires the following deliverables:
- 	(1) an initial abstract suitable for public release at the time the CRADA is approved by DOE
- 	(2) a final report, upon completion or termination of the CRADA to include a list of subject inventions
- 	(3) computer software in source and executable object code format as defined within the Statement of Work or elsewhere within the CRADA documentation.
- 	It is the Contractors RESPONSIBILITY to provide the above information at the time of completion to DOE OSTI (see paragraph B in this CRADA Article XI)

## Other Types of OSTI Reports (cont.)

- Work For Others Deliverables (if applicable)
- Thesis/Dissertations
- 	1)  Copyright of unclassified graduate theses (and related scientific papers) vest in the author
- 	2)  DOE has the right to retain duplicates of the documents and use them for any purpose
- 	(See DEAR 970.5227-2(d)(3)
- Conference papers and Proceedings
- Laboratory-directed R&D (LDRD) STI deliverables

## Other Issues Related to STI

- Patent Number Database
- 	a)  OSTI publishes/lists all DOE Patents issued for DOE
- 		General Counsel
- 	b)  This is presently being expanded to include all of the
- 		Contractor’s inventions to more accurately show the
- 		number of patents being funded through DOE research 	by its Laboratories instead of the ones patented by only
- 		DOE.
- 	c)  OSTI has direct access to HQ IP Counsel’s PC Master
- 		database to get this information.  Therefore, it is
- 		important for the Contractors to report the patent
- 		application serial numbers and resulting patent numbers
- 		to DOE Field Counsel so that this information is
- 		updated in PC Master.

## 				           Conclusion

- Questions?
- Contacts:
- _[gary.drew@bso.science.doe.gov](mailto:gary.drew@bso.science.doe.gov)_
-                                      (510) 486-6703
- _[paul.gottlieb@hq.doe.gov](mailto:paul.gottlieb@hq.doe.gov)_
- 				      (202)586-3439