Attention:

A Deeper Dive into Intellectual Property and Federal Contracting


Level: Advanced
Runtime: 92 minutes
Recorded Date: December 01, 2017
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Agenda

12:00 pm - 1:30 pm
  • Implementation of standard IP licenses in FAR and DFARS
  • Basics in drafting commmercial and specially negotiatied licenses
  • Litigation of IP issues against the Federal Government
  • Questions and answers
Runtime: 1 hour and 32 minutes
Recorded: December 1, 2017

Description

Panelists will conduct a more in depth discussion on compliance with contract clauses and license rights for technical data and computer software in federal contracts, the enforcement mechanisms available to contractors and subcontractors for these clauses, and how Government unlicensed use of patents is addressed.

This program was recorded on December 1st, 2017.

Provided By

American Bar Association

Panelists

Scott A. Felder

Partner
Wiley Rein LLP

Scott represents clients in the acquisition, protection, management, and enforcement of intellectual property rights. His practice focuses on the complex intellectual property issues confronted by government contractors, including patent rights and rights in technical data and computer software, with emphasis on the aerospace and defense sectors. Scott routinely represents clients in intellectual property disputes and negotiations with the government.

As the head of the Firm’s Patent Prosecution practice, Scott also represents clients before the United States Patent and Trademark Office, including the Patent Trial and Appeal Board.

A frequent speaker and author on intellectual property issues, Scott is the co-instructor of the Federal Publications Seminars Government Contract Intellectual Property Workshop and the co-author of a forthcoming desk reference on intellectual property in government contracts. He currently serves as a co-chair of the Intellectual Property and Technology and Electronic Communications Committees of the American Bar Association's (ABA) Section of Public Contract Law.

George O. Winborne

Patent Attorney
U.S. Army Material Command

George Winborne is Intellectual Property Counsel for the U.S. Army Materiel Command Headquarters (AMC) at Redstone Arsenal, Alabama where he advises on intellectual property, information technology and cybersecurity legal issues. Previously, he practiced intellectual property (IP) law with the U.S. Army Aviation and Missile Command.

AMC is the Army’s premier provider of materiel readiness – technology, acquisition support, materiel development, logistics power projection, and sustainment.

Mr. Winborne has a B.S. in Physics from Florida State University (1985) and a M.S. in Solid State Physics (1989) and J.D. (1997) from the University of North Carolina at Chapel Hill. He was inducted into Phi Beta Kappa. He is a member of the bars of New York and North Carolina, the Federal Southern and Eastern Districts Courts of New York, the Federal Eastern and Middle District Courts of North Carolina and the Fourth Circuit Court of Appeals. Mr. Winborne is admitted to practice before the United States Patent and Trademark Office. He is a member the American Bar Association (Intellectual Property Section, Public Contract Law Section), the American Intellectual Property Law Association, the Federal Bar Association, the North Carolina Bar Association, and the Licensing Executive Society.

Prior to working for the Army, Mr. Winborne practiced for several years with the firms of Kenyon & Kenyon and Alston & Bird where his specialties were patent preparation, and IP and commercial litigation. His Army practice spans a wide spectrum of IP law including rights in technical data, computer software and patents, patent procurement and patent licensing, copyrights, trademarks, rights of publicity, and issues at the intersection of IP and technology security. Mr. Winborne has had major roles in developing Army and DoD guidance in the areas of data rights and intellectual property. Mr. Winborne has prosecuted or litigated patents or negotiated licenses on, e.g., semiconductor technology, organic photovoltaic devices, software, metamaterials, implantable prosthetic devices, nonwoven textile manufacturing techniques, conveyor rollers, 3D imaging, and satellite television. His other litigation experience includes disputes on enterprise resource planning systems (ERPs), trademarks, securities and consumer fraud, transportation, tax appeals, and supply contracts. He was part of the Bankruptcy Examiner’s team in the Enron bankruptcy. Mr. Winborne has counseled Government clients on technology transfer, patent licensing, litigation and acquisition issues related to IP rights in various weapons, transportation, and information systems and logistics support related technologies.

James G. McEwen

Senior Intellectual Property Attorney
Lockheed Martin Corp.

James G. McEwen received a Bachelor of Science degree in Aerospace Engineering from the University of Texas in 1993, and J.D. with honors from George Washington University National Law Center in 1996, where he was a staff member of the Public Contract Law Journal. Mr. McEwen is admitted to practice law in the Commonwealth of Virginia and the District of Columbia, and is registered to practice law before the U.S. Patent and Trademark Office.

Mr. McEwen has prepared and prosecuted patent applications in computer hardware and software, control systems, mechanical and optical devices, semiconductor manufacturing and manufacturing equipment, battery and battery manufacturing methods, data encoding and decoding methods and devices, and display device technologies. In addition, Mr. McEwen has prepared and been involved in patent validity and infringement opinions, reissue and reexamination proceedings, intellectual property licensing and settlement negotiations, intellectual property licensing with elements of the Federal government, trademark prosecution, domain name disputes, trade secret protection, and provided litigation support in patent infringement claims.

Mr. McEwen was previously employed as an intellectual property attorney with the U.S. government at the Naval Surface Warfare Center and Naval Air Systems Command, during which time he further specialized in the contractual procurement and management of intellectual property from third parties, negotiating and drafting special licenses for intellectual properties under standard Federal Acquisition Regulation and Other Transaction Agreements, litigation support, evaluating third party claims of infringement, reviewing invention disclosure forms and prosecution of original applications, and reviewing non-disclosure agreements.


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