In June 2018, the White House[1] outlined the threats posed by China’s investment in and acquisition of U.S. companies, noting that China is engaged in “state-sponsored IP theft through physical theft, cyber-enabled espionage and theft, evasion of U.S. export control laws, and counterfeiting and piracy.”[2] Apparently, someone recognized that those $1 million-to $5 million-dollar companies in Silicon Valley may be getting capital injections from folks who are not in it simply for the investment return. Worse still, until now, the United States has had no mechanism to review or prevent such foreign investment and resultant control.

Continue Reading FIRRMA Becomes Law, Reforming CFIUS, Export Controls, and Forever Changing Diligence in Foreign Direct Investment and Structuring of Public and Private Equity Deals – Intellectual Property and Technology Law Journal

In the August 2018 publication of Thomson Reuters’ Briefing Papers, McCarter & English Government Contracts and Export Controls Partner Dan Kelly provides a comprehensive review of patent rights under “Other Transaction Agreements” (OTAs) with DoD and NASA. Heavily promoted by Congress, and only partially understood by industry, OTAs are quickly becoming DoD’s and NASA’s contractual vehicle of choice to lure commercial companies to sell the Government their latest and greatest technologies. However, OTAs are not governed by standard government contracts laws and regulations, meaning there are significant changes to the common provisions of ownership and license rights incident to government contracts and grants. The Briefing Paper should be required reading before entities enter into an OTA as a vehicle for developing new technologies for NASA and DoD to ensure their company’s intellectual property efforts are properly protected.

Continue Reading IP Rights Under NASA and DoD “Other Transaction” Agreements—Inventions and Patents

The Demon: What an excellent day for an exorcism.
Father Karras: You would like that?
The Demon: Intensely.

Honestly, it was challenging finding an all-audiences quote from William Peter Blatty’s “The Exorcist,” but we believe that this quote is exactly what federal contractors need to know. Today is indeed an excellent day for an information system exorcism and, unlike Father Karras, federal contractors know the name of that which they must purge: Kaspersky Lab.

Continue Reading The Russian Exorcism of US Gov’t Contracts

July 6th will mark the entry into force of Section 301 tariffs against China. Section 301 of the Trade Act of 1974 provides the president with the authority to respond to unfair, unreasonable, or discriminatory trade practices and gives the Office of the U.S. Trade Representative (USTR) the ability to take action to compel another country to eliminate the offending act, policy, or practice, with the president’s approval. Surprising no one, this president concluded that the United States is being taken advantage of in the global trade regime. What followed was a decision to impose tariffs on China and most of our other largest trading partners.

Continue Reading A Scorching Summer for Global Trade (and a few words on the Global Game)

In June, the White House released a report outlining the threats posed by China’s investment in and acquisition of U.S. companies. Spoiler alert: The report noted that China is engaged in “state-sponsored IP theft through physical theft, cyber-enabled espionage and theft, evasion of U.S. export control laws, and counterfeiting and piracy.” Apparently, someone recognized that those $1 million to $5 million-dollar companies in Silicon Valley may be getting capital injections from folks who are not in it simply for the investment return. Worse still, until now, the United States has had no mechanism to review or prevent such foreign investment and resultant control.

Continue Reading Significant CFIUS and Export Control Reforms Target Foreign Direct Investment and Structuring of Public and Private Equity Deals

At this point, even casual observers of the news likely have heard of Moscow-based Kaspersky Lab. In the wake of reported connections to the Kremlin and Russian intelligence entities, the cybersecurity company was famously banned as a source of supply to the United States Government by Section 1634 of the 2018 National Defense Authorization Act (“NDAA”). Effective October 1, 2018, the NDAA forbids every “department, agency, organization, or other element of the Federal Government” from using “any hardware, software, or services developed or provided, in whole or in part” by (i) Kaspersky and any corporate successors, (ii) any entities controlled by or under common control with Kaspersky and (iii) any entity in which Kaspersky has majority ownership.

Continue Reading The FAR Takes Aim at Russia’s Kaspersky Lab: What Every Contractor Must Know

Buried in a grab bag of seemingly innocuous course-correcting changes to the Bayh-Dole Act regulations (effective May 14 of this year) is the removal by regulators of the sixty-day window between the federal agency’s notice of a contractor/grantee’s failure to give timely notice of inventions in order to secure title and the federal agency’s ability to take title and strip contractors and grantees of what may be their most valuable assets – i.e., their intellectual property. Now the Government is no longer constrained by this time limitation, and it may grab title to inventions conceived or reduced to practice with Government funds at any time should the contractor/grantee fail to follow the rules.

Continue Reading Contractors and Grantees Beware! Safe Harbors Removed in Preserving Patent Ownership Rights Under Bayh-Dole

Years ago I witnessed the owner of a Staten Island car dealership talking to his sales staff about their end-of-model-year sale. The dealership owner flogged and lashed about incentives, rebates and financing, but the message was singular: We’re here to deal! I was reminded of this on April 19, 2018, when our current President issued National Security Presidential Memorandum No. NSPM-10 (the Memorandum) outlining the new Conventional Arms Transfer (CAT) Policy. While it’s incongruous to equate the sale of the F-35 Joint Strike Fighter with a Nissan, the new CAT policy is clear: We’re here to deal!

Continue Reading Send Lawyers, Guns and Money: The New Conventional Arms Transfer Policy

Alex Major is a contributing author to the Nuix 2018 Black Report: Decoding the Minds of Hackers, a unique report that engages professional hackers, penetration testers, and incident responders to understand the security threat landscape companies face. Alex, a former intelligence officer, focuses his chapter on why companies need to properly select and structure their cyber-threat intelligence solutions to ensure the analysts using the data can turn it into actionable intelligence for senior leadership. Please click here for a copy of the full report.

As most contractors know all too well, doing business with the Government can be quite frustrating. One of the most – if not the most – prominent sources of that frustration is that the Government often operates with a callous disregard for the laws and regulations that are supposed to dictate the course of play under the contracts to which it is a party. With its December 28, 2017 decision in Flour Federal Solutions, LLC, ASBCA No. 61431-983, the Armed Services Board of Contract Appeals (“ASBCA” or “Board”) cast a searing spotlight on the Government’s dilatory conduct in the context of repeatedly failing to respond to a contractor’s claim. The facts are troubling:

Continue Reading The ASBCA Thunders to the Government: Do Your Job!