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Patents, Invention Reporting and IP Considerations for Grants & Other Types of Agreements

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Morrison Foerster partner Tina Reynolds and associate Locke Bell presented a webinar titled Patents, Invention Reporting and IP Considerations for Grants & Other Types of Agreements,” as part of FedPubs IP webinar series.

Morrison Foerster partner Tina Reynolds and associate Locke Bell presented a webinar titled Patents, Invention Reporting and IP Considerations for Grants & Other Types of Agreements,” as part of FedPubs IP webinar series.The webinar explored the consequences of developing inventions using federal government funding and developing IP under non-procurement vehicles such as grants, cooperative agreements, and other transactions, answering the questions who owns the IP and what rights the government obtains.  <hr>

FedPubs Seminars Intellectual Property Series

Patents, Invention Reporting and IP Considerations for Grants & Other Types of Agreements

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Tina is Co-chair of Morrison Foerster’s Government Contracts & Public Procurement practice. She represents a wide variety of government contractors including information technology, defense, biotechnology, and pharmaceutical companies, with a focus on general contract counseling and compliance, particularly concerning intellectual property, and cybersecurity matters and federal grant funding.Tina counsels contractors on compliance with federal, state and local acquisition and ethics regulations and with the evolving myriad of requirements pertaining to data security and cybersecurity. She has been involved with numerous internal investigations and compliance reviews, and with mandatory and voluntary disclosures to agencies, and litigation of False Claims Act matters.Tina routinely advises clients concerning:<ul><li>Prime-subcontractor relationships</li><li>Sources of supply and country of origin requirements</li><li>Price reductions and price reporting issues</li><li>Organizational conflicts of interest</li><li>Safeguarding of intellectual property and other proprietary interests</li><li>Licensing and data rights issues</li><li>Handling of classified materials and controlled unclassified information</li><li>Agency suspension and debarment proceedings</li></ul>She also assists clients with due diligence and other activities related to the acquisition of government contracting concerns, and with the drafting and negotiation of teaming agreements, subcontracts, licensing agreements, and cooperative research and development agreements. She also assists clients applying for federal grants (including SBIR and STTR agreements), and those who seek to obtain other transactional authority agreements, as well as those competing for state and local government work.Tina’s litigation experience includes government contracts claims litigation in federal courts and before boards of contract appeals, bid protests before the Government Accountability Office and the Court of Federal Claims, and complex disputes in federal courts, including civil fraud and False Claims Act litigation and reverse Freedom of Information Act litigation.Prior to joining Morrison Foerster, Tina worked at another large national firm and as a trial attorney in the Office of the General Counsel of the Navy, Navy Litigation Office.<h4>Representative Experience</h4><ul><li>Negotiation of largest CHIPS Act federal funding agreement between multinational semiconductor corporation and U.S. Department of Commerce.</li><li>Negotiated prime contract and major subcontracts related to the Department of Energy’s next generation supercomputer program, including extensive IP rights negotiations and negotiation of associated patent rights waivers.</li><li>Negotiated series of other transaction authority agreements with DARPA and associated subcontracts with more than a dozen research universities on behalf of a firm biotech client, including complex IP rights allocations and material transfer agreements.</li><li>Assist clients with FedRAMP authorization process and with development of license agreements for software products sold to federal, state and local government agencies.</li><li>Cyber incident response counseling to some of the largest companies and organizations impacted by security incidents.</li><li>Advises clients on Bayh-Dole reporting of inventions and IP strategies for contracts and grants.</li><li>Conducts due diligence for major government contract mergers and acquisitions.</li></ul>

Tina D. Reynolds

Partner

Locke Bell is a partner in the firm’s Government Contracts & Public Procurement practice.Locke is a recognized authority on intellectual property in government contracting, which he teaches as an adjunct professor at the George Washington University Law School. Locke is a trusted counselor, litigator, and strategic partner to technology-driven clients as they engage with the U.S. government and others in the complex landscape of public procurement, grants, and government-sponsored initiatives, including nontraditional acquisition methods such as other transaction agreements (OTs or OTAs), cooperative research and development agreements (CRADAs), and the Small Business Innovation Research (SBIR) and Small Business Technology Transfer (STTR) programs. He represents clients across all industries, including aerospace and defense, commercial software and information technology, and healthcare, pharmaceuticals, and biotechnology, on issues that arise throughout the full lifecycle of engagement with federal, state, and local governments.As a litigator, Locke represents clients in data rights challenges and claims related to patent and copyright infringement, trade secrets misappropriation, and reverse-FOIA disputes, as well as complex contract claims, bid protest, and civil fraud and qui tam actions under the False Claims Act. Locke also regularly advises clients on government contracting issues in transactional matters, having guided large and small businesses, private equity firms, and entrepreneurs through more than a hundred mergers and acquisitions. He is a skilled negotiator of commercial and noncommercial licensing agreements, contracts and subcontracts, and teaming agreements, and he is intimately familiar with selling commercial software and other products through the GSA Federal Supply Schedules and other government-wide acquisition vehicles, such as NASA SEWP and DoD ESI, having acted in an in-house capacity on secondment to a large, publicly traded commercial software company.Locke has been recognized as a Rising Star by Law360 and the National Law Journal. Locke is also involved in the American Bar Association, where he formerly served as co-chair for the Intellectual Property Committee of the Section of Public Contract Law.Locke holds a B.S. in mechanical engineering from the University of Virginia and previously worked at the U.S. Patent and Trademark Office as a patent examiner, specializing in mechanical arts. He earned his J.D. with honors from the George Washington University Law School, where he received the Patricia A. Tobin Government Contracts Award for excellence in government contracts law. Locke also clerked for Judge Mary Ellen Coster Williams at the Court of Federal Claims.

Locke Bell

Artificial Intelligence (AI)

Technology

Government Contracts + Public Procurement

Patents, Invention Reporting and IP Considerations for Grants & Other Types of Agreements

21 Jun 2023