Awards for Small Business Innovation Research (SBIR) from the government can provide the funding that small businesses need to conduct additional research and increase development. However, this funding does not come without any strings attached, as the contract you sign with the government will have certain terms regarding the products of your research. Specifically, the government will likely aim to maintain rights to use any inventions conceived through work that you conduct as part of the funding agreement.

Consulting with our law firm prior to receiving funding can help you to understand how SBIR awards might impact your company’s IP rights, as well as steps you might take in advance of funding to protect your intellectual property.

SBIR and Patent Rights

Contracts that come along with SBIR funding will usually have a clause that allows your company to retain patent rights and ownership of your inventions that stem from the SBIR work. However, you must obtain the patent, and the government can retain the license to use the intellectual property.

Some business owners wish to restrict such broad licensing rights of the government, and our attorney can advise on steps you might take prior to your SBIR application to achieve this objective. This requires ensuring that your IP does not become a “subject invention” of the government contract.

We can assess your situation and advise whether you should obtain patent pending status before applying for SBIR to retain your rights. If this is the case, we can assist with the application process. If you improve on the patent during your SBIR contract, we can file for additional patents and provide counsel on the government’s licensing rights to those improvements.

Speak with an Montana SBIR Attorney for More Information

SBIR funding can be beneficial for many startups, but it can come with important IP implications. An experienced Montana SBIR attorney at Collaborative IP can evaluate your options before and during your SBIR contract. Contact our office today to learn more.