Laurence J. Hyman MS JD

Dealing with the Strings of Federal Grants and Contracts

Firms are permitted to retain title to inventions made in the course of research funded by Federal grants and contracts. But, there are strings. Failure to comply with the rules can result in the loss of your firm's control over the inventions. And, the rules bar you from entering into certain exclusive licenses without permission. This talk will cover four topics: how to bulletproof your firm's title to inventions made under a Federal grant or contract, the Government's retained rights, Government march-in rights, and how to obtain a waiver to permit granting an exclusive license to a firm which will not manufacture the invention in the United States.

Biographical Sketch

Mr. Hyman works with a variety of corporate, institutional and government clients to implement strategies for their patent portfolios. In addition to his biotechnology patent practice, Mr. Hyman maintains an active licensing practice, assisting inventors and assignees realize value from their patents and applications. He recently negotiated a multi-million-dollar Cooperative Research and Development Agreement (CRADA) between the U.S. Department of Energy (DOE) and two large public companies. Mr. Hyman also advises clients on compliance with reporting requirements for research conducted under grants and contracts with the National Institutes of Health (NIH), the Defense Department, and other Federal agencies.

Prior to joining Townsend, he was the lead patent advisor for the General Medicine Workgroup and former acting Chief of the Cellular Growth and Regulation Branch of the NIH Office of Technology Transfer. There, he oversaw the work of some 15 law firms that conducted domestic and foreign patent prosecution of hundreds of NIH cases. He evaluated scores of invention disclosures and prosecuted patent applications. He was involved in a number of inventorship determinations and interferences, negotiated licenses with companies, and negotiated inter-institutional agreements with universities. Mr. Hyman served on the first NIH panel ever convened to decide a request that the Government "march-in" under Federal law and award a company a license to technology developed at a university under government funding.

Before switching his focus to patent law, Mr. Hyman was a trial attorney with the Office of Enforcement Litigation of the DOE's Economic Regulatory Administration (ERA), for which he argued cases seeking over $50 million from companies accused of violations of Federal law and was involved in numerous settlement negotiations. Mr. Hyman also served in the ERA's Office of Special Counsel and in the DOE's Office of General Counsel. In these positions, he litigated administrative and judicial cases, negotiated numerous consent orders and settlement agreements.

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