"Software," as that term is used herein, means computer programs, executables, source code, and object code. Software does not include computer databases or software documentation. Additionally, although design details, algorithms, processes, flowcharts, formula, and related material that would enable a particular piece of ARL software, or a functional equivalents thereof, to be reproduced or created are not considered "Software", their premature release may jeopardize IP protection and commercialization of software to which they relate.
Software that meets the statutory or legal requirements may be patentable under U.S. Patent Law. In other words, the software must constitute a patentable invention. Once a patent application (provisional or non- provisional) is on file with the U.S. Patent and Trademark Office, the Government's rights in the invention are preserved although there is no guarantee that a patent will ultimately be issued.
Software can be protected under U.S. Copyright Law as a literary work. Copyright protection attaches as soon as the work is expressed in a tangible medium of expression. However, software created solely by civil servants as part of their jobs is considered a U.S. Government work to which U.S. copyright protection is not available. There are different opinions on the ability to assert foreign copyright even though the software is a U.S. Government work. In any case, the Government may obtain and hold copyright transferred to it. The copyright only protects the expression that the software code takes and does not protect the underlining algorithms or processes. Algorithms and processes are best protected by attempting to obtain a patent. Due to the nature of software being both a literary work and invention it can be protected by both a copyright and patent.
In the private sector, software (usually the source code) can be protected as a trade secret. In the Government, it has been held that certain software is not a "Government record" under the Freedom of Information Act (FOIA) that would require its release. Thus, the ability to withhold its release creates a certain level of protection of the software. Moreover, in accordance with the authority in SEC. 801 of Public Law 113-66, software may be exempt from disclosure under section 552 of title 5, United States Code, for a period of five years after the development of the computer code. Should a release be contemplated, conditions could include nondisclosure and copyright like restrictions based on contract principles.
Trademark protection is established through use in commerce on goods and services. Additional protection can be obtained through the federal registration process. The proper use of the name selected for a particular piece of software as a trademark will go a long way to establishing protection.
Whenever a new name is being coined for computer software it should be referred to as "ARL Trademark" as opposed to just "Trademark." For example, just as Microsoft Word and Microsoft Excel refer to Microsoft's word processing and spreadsheet software, respectively, ARL would benefit by having its corporate name preceding newly coined software. This is especially important for software ARL plans to publicly distribute. The ARL is already a federally registered trademark that works as our "house brand."
Always use a Trademark as a proper adjective together with the generic name of the product. The Trademark (adjective) modifies the generic term (noun). To avoid a Trademark from becoming generic never use a Trademark as a common noun or by using a plural form (adding s) or a possessive form (adding s). Never use a Trademark as a verb. Example: to the extent "xerox" is used as a verb (to copy something), it lessens the value of the term as a Trademark. Use of "Brand" following a Trademark is especially helpful to combat generic tendencies. For example, repeated reference to SCOTCH tape as SCOTCH Brand cellophane tape (or SCOTCH cellophane tape) helps remind consumers that SCOTCH is a Brand name for tape from a single source, i.e., the 3M Company. In contrast, repeated reference to just SCOTCH tape, without following it with the word Brand or cellophane, may ultimately lead consumers to think SCOTCH is a generic term for cellophane tapes from any source.
The software needs to be reported to the IP Law Branch. The IP Law Branch will make an IP assessment to determine ARL's rights and ability to release the software.
All projects proposed for release must undergo an OPSEC review by undergoing the ARL Form 1 process. OPSEC is a process used to identify and deny critical information (specific information about capabilities and/or intentions) from adversaries who seek to exploit such information for their advantage and our disadvantage. The OPSEC process involves systems threat and vulnerability analyses, risk assessment, and cost-effective countermeasure planning and implementation. Its results include improved understanding of the following:
- the specific items deemed critical to the mission,
- indicators of that information,
- countermeasures that protect this information from the adversary, and
- an analytical basis for these decisions, if the process is applied properly.
Recognize that it is the intent of the patent system to eventually disclose the invention described in a non-provisional patent application to the public. Unless a patent applicant specifically requests otherwise, the U.S. Patent & Trademark Office will publish the patent application after 18 months. Even if an applicant has requested that the application not publish after 18 months, any patent that ultimately issues will be publicly available. Patent applications filed on classified and other critically sensitive inventions will be placed under secrecy orders. Thus, each invention being considered for patenting needs to have an OPSEC review and ARL Form 1 completed so that ARL Legal knows whether or not details of the invention can be released to the public.
There is a specific Army regulation concerning the release of model and simulation software (Army Regulation 5-11, Management of Army Models and Simulations). The party requesting the software must have a valid requirement. For release to other U.S. Government agencies, U.S. contractors, and federally funded research and development centers (FFRDCs), the release approval authority is the major Army command (MACOM) commander or agency head of the organization, which is the model and simulation proponent of the requested software. Designation of release approval authority can be delegated to lower levels as defined in Appendix B-2. (AR 5-11, 8-3, Release Approval Authority). The ARL has a companion policy document ARL-M-5-2, Release of Models and Simulations Outside ARL.
The preferred approach for providing Government-furnished property (GFP), including Government-furnished software (GFS), to a company under a Government contract is through the contract, either at the beginning of the effort or through a contract modification. In either case, a Contracting Officer with the authority to bind the Government signs on behalf of the Government. The decision to provide GFS should be made only after careful consideration of all relevant factors. Providing software to a contractor through a separate letter agreement from the technical organization having custody of the software is not the best mechanism to use. The technical person signing the letter may not have the authority to transfer the software. If a letter is being used because the thought is that a contract modification is too burdensome, then a "standard" contract mod to provide GFS could be created to facilitate the process.
Software has been released by ARL to companies that sometimes also happen to be Government contractors for beta testing. Issues include the following:
As long as the arrangement does not amount to acceptance of voluntary services for which the beta testing party could file a claim but, instead, is structured as "gratuitous services", where the individual agrees (often in writing in advance) to perform the services and will not request payment, such an arrangement would not be considered to violate the Anti-deficiency Act (31 U.S.C. 1342).
A sample Beta Test Agreement ARL has used in the past does not include a cite to any authority. One approach might be to enter into a no cost contract, which would be signed by a contracting officer. Again, there must be some sort of value or consideration for the contractor as there would be no exchange of money.
A patent license basically grants permission to a licensee to use the invention without the fear of infringement. Generally, patent licensees want to use software covered by the patent in one of three ways: (1) the licensee wants to sell a software program as a standalone commercial product, (2) the licensee wants to integrate the software into one of its own existing commercial products, or (3) the licensee wants to use the software for its own internal purposes. Thus, the scope of the license must be tailored to fit the circumstance. A patent application (provisional or non-provisional) should be on file with the U.S. Patent and Trademark Office before a license is entered into. The Director of ARL has authority to grant patent licenses under 15 U.S.C. 3710a. Royalties negotiated and collected under a patent license are shared with the inventors listed on the patent and any balance remaining may be retained by the laboratory.
A copyright license grants permission to a licensee to do one or more of the following: (1) reproduce the work, (2) distribute the work, (3) prepare derivative works, and (4) display or perform the work publicly. Although Government works (i.e., those created by civil servants under the scope of their employment) are not protected by U.S. copyright, ARL may obtain copyright on software through an assignment to the Government. The Director of ARL is the official delegated to license the laboratory's IP, which could arguably include copyright assigned to the Government. However, any royalties collected under a copyright license are considered to fall under the miscellaneous receipts statute and must be forwarded to the U.S. Treasury.
SEC. 801 of the FY14 National Defense Authorization Act, Public Law 113-66, provides new authority, and assigns responsibilities and procedures for DOD licensing of computer software and related documentation developed at a DOD Laboratory. Royalties collected are to be shared with the software developers. [Waiting for DOD implementation of policy and delegations.]
Software may be provided as part of the Government's contribution to a CRADA relationship. If there is no patent or copyright protecting the software it can be provided with "copyright like" restrictions. However, these contractual restrictions will only apply to the CRADA Collaborator. Should the software be released to others there is no way to prevent its use by third parties. If software is provided to a CRADA Collaborator, it appears that a fee could be charged to reimburse the laboratory for its use by the CRADA Collaborator. Determining the amount to charge could be a challenge and, of course, subject to negotiation. The ARL is authorized to retain money collected under a CRADA but is not authorized to share the money with civil servants involved in the software's creation. Note that any changes to the software made by the CRADA partner may be protected by copyright.
Patent License in CRADA. For preexisting inventions, a CRADA partner must apply for a patent license just as any prospective licensee would be required to. The process must follow the Government's licensing regulations (see, 37 CFR Part 404). For ARL software-related inventions made under a CRADA, the CRADA partner may be offered a patent license as part of the CRADA deal. The Government's licensing regulations do not apply to patent licenses on inventions made under a CRADA.
Copyright License in CRADA. The CRADA statute, 15 U.S.C. 3710a. (a)(2), authorizes the Director to license "other intellectual property" (e.g., a copyright) that "may be voluntarily assigned to the Government" if "other authority" exists. Again, we are unaware of any "other authority" that would authorize the Director to license a copyright covering software under a CRADA. Software could be arguably be provided to a CRADA partner with "copyright like" contractual restrictions.