~Iri,n - Bayhdolecentral

38 I Journal of the Association of University Technology Managers
On April 28, 1999, the contractor finally notified the Army in writing of the
existence of the '537 patent.
What followed this notification was an exchange of letters between the
contractor and the Army about the Army's claim to joint ownership of the
snbject invention of the '537 patent based on what was described in the
June 1997 report. The administrative contracting officer (ACO) for the
Army then concluded that the contractor had forfeited tide to the '537
patent because of its failure to comply with the patent rights clause when it
did not timely disclose the subject invention to the Army.
The contractor appealed the ACO's decision to the Armed Services
Board of Contract Appeals. The Board denied the contractor's appeal,
ruling: (1) the contractor failed to satisfy its contractual obligation to
inform the Army that it considered the sonic welding of mask components
to be an invention; (2) any information that the Army obtained from its
review in January 1998 of the snbject patent application for its secrecy
determination, as well as from its own June 1997 report, was not provided
by the contractor, and, thus, forfeiture of title to the '537 patent was appropriate
under the circumstances, and (3) while the Army had some discre­
tion in determining whether to take title, it did not abuse that discretion."?
In affirming the Board's decision, the Federal Circuit acknowledged
that it was dealing with "a matter of first impression for this court. " The
Federal Circuit first referred to the Bach-Dole Act, and, specifically, the
disclosure provisions of section 202(c)(1)20 as providing the federal govern­
ment with the means to protect its rights, including the right to a paid-up
license to practice the subject invention, as well as the right to receive title
to the subject invention if the contractor did not file for patents. The Federal
Circuit then ruled that the language of the patent rights clause was "clear
and unambiguous;" the Army could take tide to any snbject invention if the
contractor failed to disclose the subject invention on the specified DD 882
form in a timely manner to the Army. The Federal Circuit further concluded
that its "plain-meaning interpretation" of the patent rights clause was
"buttressed by the policy considerations behind the Bavh-Dole Act."
The Federal Circuit also explicitly found that, at minimum, the contractor
should have disclosed the subject invention on the specified DD 882 form to
the Army by October 1997, but had not done 50.'1 The Federal Circuit was
unsympathetic to the contractor's argument that it had "continually disclosed