Fed. Cir. Strictly Construes Govt. Contract Invention Disclosure Requirements

In Campbell Plastics v. Brownlee (Fed. Cir., November 10, 2004), Campbell Plastics had entered into a contract with the Army to develop certain components of an aircrew protective mask. Campbell Plastics failed to comply with the disclosure provisions of the contract which allowed the government to obtain title to the invention.

Section I of the contract incorporated numerous clauses from the Federal Acquisition Regulations ("FARs"), including a "Patent Rights-Retention by the Contractor" clause from 48 C.F.R. § 52.227-11 (1991) ("FAR 52.227-11") that requires a contractor to disclose any subject invention developed pursuant to a government contract and sets forth certain substantive requirements for doing so. The clause further provides that the government may obtain title if the contractor fails to disclose the invention within two months from the date upon which the inventor discloses it in writing to contractor personnel responsible for patent matters.

Section I also incorporated from 48 C.F.R. § 252.227-7039 (1991) ("FAR 252.227-7039") a "Patents-Reporting of Subject Inventions" clause which requires the contractor to disclose subject inventions in interim reports furnished every twelve months and final reports furnished within three months after completion of the contracted work. Subsection H.11 of the contract, titled "Patent Rights Reports," requires the contractor to submit all "interim and final invention reports required by patent clause in Section I" on a "DD Form 882, Report of Inventions and Subcontracts."

Campbell Plastics contended that it continually disclosed all features of the invention throughout the contractual period. They also argued that the government's possession of an enabling disclosure of the subject invention, and its review of the patent application for secrecy determination purposes, satisfied Campbell Plastics's obligations under the contract. However, the Federal Circuit concluded that whatever information the government had regarding the invention, it did not get it from Campbell Plastics in the form of a proper invention disclosure:

While it is at least debatable whether the various progress reports and drawings Campbell Plastics submitted to the Army together convey a clear understanding of the nature, purpose and operation of the invention as well as the invention's physical, chemical, biological or electrical characteristics, we think the contract requirement of a single, easily identified form on which to disclose inventions is sound and needs to be strictly enforced. If we were to find Campbell Plastics's style of disclosure sufficient, methods of disclosure could vary widely from case to case. The government never would be sure of which piece of paper, or which oral statement, might be part of an overall invention disclosure. But we do not so find. The contract instead demands a single form for disclosure, which enables the contracting officials to direct the inventive aspects of the contract performance to the correct personnel in the agency for a determination of whether the government has an interest in the disclosed invention, and for the government to determine how best to protect its interest. Sound policy is promoted by the rule of strict compliance with the method of disclosure demanded by the contract.