In our last post we looked at some key definitions (Invention, Subject Invention, and Made), so now let’s look at the application of those definitions.
If a subject invention falls under or is made under a government contract, the subject invention, at the time of the contract, may be either in the form of a disclosure, a patent application or even a patent. The important factor deals with the actual reduction to practice of the invention. Did the actual reduction to practice take place prior to the contract?
For a contractor or subcontractor to exclude the invention from being a subject invention, first actual reduction to practice of the invention must have taken place prior to the contract. In order to exclude such an invention from being a subject invention, it is extremely helpful for the contractor or subcontractor to have sufficient evidence to support the conception and actual reduction to practice of the invention to be excluded as subject inventions, in that both conception and first actual reduction to practice have taken place prior without the use of government funds and prior to or subsequent to the contract. If this is not the case, and the conception or first actual reduction to practice takes place under the contract, and the contractor or subcontractor must disclose this invention to the government as being a subject invention.