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Campbell Plastics
Scott 0, Locke, Jo, and Eric W Guttag, Jo I 37
In Campbell Plastics, the predecessor of a federal contractor (collectively
referred to as contractor) entered into an agreement with the Army
Chemical Research Development Engineering Center to develop certain
components of an aircrew protective mask. The agreement also contained a
patent rights retention clause, including a provision that would allow the
Army to obtain title to a subject invention if the contractor failed to disclose
that subject invention within two months from the date on which the
inventor disclosed it in writing to contractor personnel responsible for
patent matters." The agreement also provided that the contractor should
disclose subject inventions on a specified form (DD 882) in annual interim
reports, as well as in final reports within three months after contract work
was completed."
Between September 1992 and September 1994, the contractor filed
three interim reports with the Army on form DD 882 that did not identify
or disclose any subject inventions developed under the agreement." After
September 1994 and tlnough Augnst 1997 18 when the contractor contacted
its patent attorney about drafting a patent application on the subject invention
(sonic welding of mask components) that became the focus of Campbell
Plastics, the contractor filed no more interim reports on form DD 882. In
June 1997, the Army published a report (the June 1997 report) on research
conducted by the Army from October 1991 tlnough July 1995, including
research on sonic welding of mask components that became the basis for the
Army's subsequent joint ownership claim.
During this same timeframe, the contractor submitted to the Army at
least sixteen progress reports and drawings on the development under the
agreement of sonic welding of mask components. A patent application on
sonic welding of mask components was filed by the contractor on October
9, 1997. For the limited purpose of making a secrecy determination, the
Army received and reviewed a copy of the subject patent application no
later than January 30, 1998. The subject patent application eventually
issued on April 20, 1999, as U.S. Patent 5,895,537 (the '537 patent).
The '537 patent identified the contractor's agreement with the Army
and expressly reserved to the federal government a paid-up license, as well
as "the right in limited circumstances to require the patent owner to license
others on reasonable terms" as-provided for in the contractor's agreement.