"I am working through an LBNL contract with a third party software developer; what special measures should I take to ensure the protection of LBNL intellectual property?"

Certain standard contract terms that LBNL uses are not ideally suited to software development contracts. For example, in paragraph (d) of the clause at 52.227-14, Rights in Data--General, subparagraph (d)(1) recognizes the fact that normally the subcontractor has the right to use, release to others, reproduce, distribute, or publish data first produced in the performance of a contract, except to the extent such data may be subject to federal export control or to national security laws or regulations. Additionally, to the extent the subcontractor receives or is given access to data that is necessary for the performance of the contract from or by the Government or others acting on behalf of the Government, the subcontractor also has the right to use, release to others, reproduce, distribute, or publish that data, too.

However, if such data contains restrictive markings, subparagraph (d)(2) of the clause at 52.227-14, Rights in Data--General provides an agreement with the contractor to treat the data in accordance with such markings, unless otherwise specifically authorized by the contracting officer.

Thus, in order to preserve LBNL's rights in software it has developed, it is essential that LBNL personnel who work with these third parties make the following practice routine. If the subcontractor is going to use data (including software) that LBNL will provide to it in order to enable the subcontractor to carry out the contract, LBNL should provide that data with the following restrictive marking:

RESTRICTED RIGHTS NOTICE

(a) This computer software is submitted with restricted rights under Government Contract No. DE-AC02-05CH11231 (and Subcontract No. ___________). It may not be used, reproduced, or disclosed by the Subcontractor except as provided in paragraph (b) of this Notice or as otherwise expressly stated in the contract.

(b) This computer software may be--

(1) Used or copied for use in or with the computer or computers for which it was acquired;

(2) Used or copied for use in a backup computer if any computer for which it was acquired is inoperative;

(3) Reproduced for safekeeping (archives) or backup purposes;

(4) Modified, adapted, or combined with other computer software, provided that the modified, combined, or adapted portions of the derivative software incorporating restricted computer software are made subject to the same restricted rights;

(5) Disclosed to and reproduced for use by support service Contractors in accordance with subparagraphs (b)(1) through (4) of this clause, provided the Subcontractor makes such disclosure or reproduction subject to these restricted rights; and

(6) Used or copied for use in or transferred to a replacement computer.

(c) Any other rights or limitations regarding the use, duplication, or disclosure of this computer software are to be expressly stated in, or incorporated in, the contract.

(d) This Notice shall be marked on any reproduction of this computer software, in whole or in part.