B-149295, JANUARY 8, 1963, 42 COMP. GEN. 346

B-149295, JANUARY 8, 1963, 42 COMP. GEN. 346

CONTRACTS - DATA, RIGHTS, ETC. - USE BY GOVERNMENT THE USE IN SPECIFICATIONS OF DATA ON A "FLEXIROTOR" FURNISHED UNDER A RESEARCH AND DEVELOPMENT CONTRACT, WHERE BOTH THE CONTRACTOR AND THE GOVERNMENT HAD BEEN GRANTED BY THE INVENTOR A ROYALTY-FREE LICENSE TO PRACTICE OR CAUSE TO BE PRACTICED ANY INVENTION DEVELOPED INCIDENT TO THE CONTRACT WITH THE EXCEPTION, IN ACCORDANCE WITH PARAGRAPH 9-107.2 (A) (I), ARMED SERVICES PROCUREMENT REGULATION, OF THE FLEXIROTOR, ON WHICH A PATENT APPLICATION WAS PENDING, CONSTITUTES A DISCLOSURE OF INFORMATION THAT PERMITS THE PRACTICE OF THE INVENTION, AND THE PATENTEE HAVING THE RIGHT TO MAINTAIN HIS INVENTION AS A TRADE SECRET PENDING THE APPLICATION, THE REQUEST FOR PROPOSALS SHOULD BE WITHDRAWN, THE USE OF THE DATA EXCLUDED FROM THE LICENSE IN DEVELOPING THE SPECIFICATIONS HAVING BREACHED THE INVENTOR'S RIGHT TO THE PROTECTION OF HIS TRADE SECRET.

TO THE SECRETARY OF THE AIR FORCE, JANUARY 8, 1963:

WE REFER TO A LETTER OF NOVEMBER 7, 1962, SIGNED BY THE DEPUTY GENERAL COUNSEL, TRANSMITTING A REPORT IN RESPONSE TO OUR REQUEST OF OCTOBER 10, 1962, DEALING WITH A PROTEST BY BARISH ASSOCIATES, INCORPORATED, AGAINST THE NEGOTIATION OF A CONTRACT UNDER PURCHASE REQUEST NO. 127479.

IN MARCH OF 1960, DAVID BARISH FILED PATENT APPLICATION NO. 12011. FOUR MONTHS LATER, IN ORDER TO INTEREST THE AIR FORCE IN THE INVENTION, BARISH PRESENTED TO THE AIR FORCE, UNDER THE TERMS OF A FORM 91 "POLICY AGREEMENT FOR EVALUATION OF UNSOLICITED ARTICLES OR DISCLOSURES" (MAY 1957 EDITION) INFORMATION CONCERNING THE SUBJECT MATTER OF SUCH APPLICATION--- NAMELY, AN AERODYNAMIC DEVICE DESIGNATED BY THE INVENTOR AS A "FLEXIROTOR.' OCTOBER 1, 1960, WITH THE KNOWLEDGE, AND APPARENTLY THE COOPERATION OR ACTIVE SOLICITATION OF THE AIR FORCE, BARISH ENTERED INTO A CONTRACT WITH VIDYA, INCORPORATED, WHEREBY BARISH WAS TO PERFORM CONSULTING WORK FOR THE LATTER WITH RESPECT TO ANY CONTRACT WHICH MIGHT BE ENTERED INTO BETWEEN VIDYA AND THE AIR FORCE AS A RESULT OF JOINT BARISH-VIDYA EFFORT.

UNDER ARTICLE 5 (A) OF THE BARISH-VIDYA CONTRACT, BARISH AGREED THAT NEITHER THE UNITED STATES NOR VIDYA WOULD BE CONSIDERED IN VIOLATION OF ANY RIGHT OR PRIVILEGE BELONGING TO BARISH ARISING OUT OF THE INVENTION DESCRIBED IN PATENT APPLICATION NO. 12011 BY VIRTUE OF CARRYING OUT RESEARCH AND DEVELOPMENT WORK UNDER A CONTRACT BETWEEN THE GOVERNMENT AND VIDYA RESULTING FROM THE AFORESAID JOINT EFFORT. BY ARTICLE 5 (D) OF THE BARISH-VIDYA CONTRACT, THE PARTIES GRANTED TO EACH OTHER, AND TO THE UNITED STATES TO THE EXTENT REQUIRED BY THE ARMED SERVICES PROCUREMENT REGULATION, A ROYALTY-FREE LICENSE TO PRACTICE ANY INVENTION DEVELOPED PURSUANT TO THE BARISH-VIDYA CONTRACT UNDER ANY CONTRACT BETWEEN VIDYA AND THE GOVERNMENT. HOWEVER, THE INVENTION DISCLOSED IN PATENT APPLICATION NO. 12011 WAS SPECIFICALLY EXCLUDED FROM THE PROVISION.

A CONTRACT FALLING WITHIN THE SCOPE OF THE BARISH-VIDYA AGREEMENT WAS ENTERED INTO BY THE AIR FORCE AND VIDYA EFFECTIVE JANUARY 2, 1961. UNDER THE TERMS OF THAT CONTRACT, DESIGNATED AS NO. AF-33 (616/ 7613, VIDYA WAS TO CONDUCT A FLEXIBLE ROTOR INVESTIGATION AND TO FILE REPORTS IN CONNECTION THEREWITH. PART V OF THE CONTRACT PROVIDED THAT BARISH WAS TO BE THE "PRINCIPAL INVESTIGATOR" AND THAT PRINCIPAL INVESTIGATORS COULD BE REPLACED OR ADDED ONLY WITH THE APPROVAL OF THE AIR FORCE CONTRACTING OFFICER. THE CONTRACT FURTHER PROVIDED AT PART VIE---

E. PATENT EXCLUSION

1. CONTRACTOR, VIDYA, INC. AGREES HEREIN THAT TITLE OR SUFFICIENT RIGHTS WILL BE OBTAINED TO INVENTIONS OF DAVID BARISH RELATING TO A FLEXIBLE ROTOR SYSTEM TO ENABLE DAVID BARISH AND CONTRACTOR TO FULLY COMPLY WITH PROVISIONS OF ASPR CLAUSE 9-107.2 (B) UNDER SUBJECT CONTRACT.

2. IT IS AGREED, HOWEVER, THAT THE INVENTION DISCLOSED AND CLAIMED IN U.S. PATENT APPLICATION NO. 12011 BE EXCLUDED FROM THE LICENSE GRANT IN ACCORDANCE WITH ASPR 9-107.2 (A) (I), WHEN ABOVE PROVISIONS HAVE BEEN COMPLIED WITH.

ASPR CLAUSE 9-107.2 (B) PROVIDES GENERALLY FOR THE INCLUSION OF A PATENT RIGHTS CLAUSE IN CONTRACTS OF THIS TYPE. ASPR 9-107.2 (A) (I)PERMITS THE EXCLUSION OF INVENTIONS FROM THE PATENTS RIGHTS CLAUSE UNDER CERTAIN CONDITIONS PROVIDING THEY ARE SPECIFICALLY IDENTIFIED.

THE CONTRACT INCLUDED IN THE GENERAL PROVISIONS CLAUSES THE FOLLOWING:

18. PATENT RIGHTS (MAR. 1960)

(A) AS USED IN THIS CLAUSE, THE FOLLOWING TERMS SHALL HAVE THE MEANINGS SET FORTH BELOW:

(I) THE TERM "SUBJECT INVENTION" MEANS ANY INVENTION, IMPROVEMENT, OR DISCOVERY (WHETHER OR NOT PATENTABLE) CONCEIVED OR FIRST ACTUALLY REDUCED TO PRACTICE EITHER---

(A) IN THE PERFORMANCE OF THE EXPERIMENTAL, DEVELOPMENTAL, OR RESEARCH WORK CALLED FOR OR REQUIRED UNDER THIS CONTRACT; OR

(B) IN THE PERFORMANCE OF ANY EXPERIMENTAL, DEVELOPMENTAL, OR RESEARCH WORK RELATING TO THE SUBJECT MATTER OF THIS CONTRACT WHICH WAS DONE UPON AN UNDERSTANDING IN WRITING THAT A CONTRACT WOULD BE AWARDED;

PROVIDED, THAT THE TERM "SUBJECT INVENTION" SHALL NOT INCLUDE ANY INVENTION WHICH IS SPECIFICALLY IDENTIFIED AND LISTED IN THE SCHEDULE FOR THE PURPOSE OF EXCLUDING IT FROM THE LICENSE GRANTED BY THIS CLAUSE.

(B) (1) THE CONTRACTOR AGREES TO AND DOES HEREBY GRANT TO THE GOVERNMENT AN IRREVOCABLE, NONEXCLUSIVE, NONTRANSFERABLE, AND ROYALTY FREE LICENSE TO PRACTICE, AND CAUSE TO BE PRACTICED BY OR FOR THE UNITED STATES GOVERNMENT, THROUGHOUT THE WORLD, EACH SUBJECT INVENTION IN THE MANUFACTURE, USE AND DISPOSITION ACCORDING TO LAW, OF ANY ARTICLE OR MATERIAL, AND IN THE USE OF ANY METHOD. SUCH LICENSE INCLUDES THE PRACTICE OF SUBJECT INVENTION IN THE MANUFACTURE, USE, AND DISPOSITION OF ANY ARTICLE OR MATERIAL, IN THE USE OF ANY METHOD, OR IN THE PERFORMANCE OF ANY SERVICE ACQUIRED BY OR FOR THE GOVERNMENT OR WITH FUNDS DERIVED THROUGH THE MUTUAL SECURITY PROGRAM OF THE GOVERNMENT OR OTHERWISE THROUGH THE GOVERNMENT. NO LICENSE GRANTED HEREIN SHALL CONVEY ANY RIGHT TO THE GOVERNMENT TO MANUFACTURE, HAVE MANUFACTURED, OR USE ANY SUBJECT INVENTION FOR THE PURPOSE OF PROVIDING SERVICES OR SUPPLIES TO THE GENERAL PUBLIC IN COMPETITION WITH THE CONTRACTOR OR THE CONTRACTOR'S COMMERCIAL LICENSEES IN THE LICENSED FIELDS.

19. DATA (MAR. 1960)

(A) THE TERM "SUBJECT DATA" AS USED HEREIN INCLUDES WRITING, SOUND RECORDINGS, PICTORIAL REPRODUCTIONS, DRAWINGS OR OTHER GRAPHICAL REPRESENTATIONS, AND WORKS OF ANY SIMILAR NATURE (WHETHER OR NOT COPYRIGHTED) WHICH ARE SPECIFIED TO BE DELIVERED UNDER THIS CONTRACT. THE TERM DOES NOT INCLUDE FINANCIAL REPORTS, COST ANALYSES, AND OTHER INFORMATION INCIDENTAL TO CONTRACT ADMINISTRATION.

(B) THE CONTRACTOR AGREES TO AND DOES HEREBY GRANT TO THE GOVERNMENT, AND TO ITS OFFICERS, AGENTS, AND EMPLOYEES ACTING WITHIN THE SCOPE OF THEIR OFFICIAL DUTIES, A ROYALTY-FREE, NONEXCLUSIVE AND IRREVOCABLE LICENSE THROUGHOUT THE WORLD FOR GOVERNMENT PURPOSES TO PUBLISH, TRANSLATE, REPRODUCE, DELIVER, PERFORM, DISPOSE OF, AND TO AUTHORIZE OTHERS SO TO DO, ALL SUBJECT DATA NOW OR HEREAFTER COVERED BY COPYRIGHT; PROVIDED, THAT WITH RESPECT TO THE SUBJECT DATA NOW OR HEREAFTER COVERED BY COPYRIGHT AND NOT ORIGINATED IN THE PERFORMANCE OF THE CONTRACT, SUCH LICENSE SHALL BE ONLY TO THE EXTENT THAT THE CONTRACTOR, HIS EMPLOYEES, OR ANY INDIVIDUAL OR CONCERN SPECIFICALLY EMPLOYED OR ASSIGNED BY THE CONTRACTOR TO ORIGINATE AND PREPARE SUCH DATA UNDER THIS CONTRACT, NOW HAS, OR PRIOR TO COMPLETION OR FINAL SETTLEMENT OF THIS CONTRACT MAY ACQUIRE, THE RIGHT TO GRANT SUCH LICENSE WITHOUT BECOMING LIABLE TO PAY COMPENSATION TO OTHERS SOLELY BECAUSE OF SUCH GRANT.

(F) SUBJECT TO THE PROVISO OF (B) ABOVE AND UNLESS OTHERWISE LIMITED BELOW, THE GOVERNMENT MAY DUPLICATE, USE, AND DISCLOSE IN ANY MANNER AND FOR ANY PURPOSE WHATSOEVER, AND HAVE OTHERS SO DO, ALL SUBJECT DATA DELIVERED UNDER THIS CONTRACT.

THE AIR FORCE-VIDYA CONTRACT RESULTED IN ASD TECHNICAL REPORT NO. 61 660 DATED SEPTEMBER 1961. AS SUBMITTED BY VIDYA, IT IS OUR UNDERSTANDING THAT THE REPORT BORE A LEGEND RESTRICTING ITS USE OR DISCLOSURE WITHOUT THE PERMISSION OF VIDYA, EXCEPT AS OTHERWISE AUTHORIZED BY THE VIDYA CONTRACT. THAT REPORT CONTAINS DATA AND INFORMATION ALLEGED TO BE PROPRIETARY TO BARISH AS PART OF THE INVENTION DISCLOSED IN PATENT APPLICATION NO. 12011. THE INFORMATION IN THE REPORT APPEARS TO HAVE BEEN INCLUDED UNDER THE AUTHORIZATION IN ARTICLE 5 (A) OF THE BARISH-VIDYA CONTRACT. THE AIR FORCE USED THE INFORMATION IN THE REPORT TO DEVELOP SPECIFICATIONS INCLUDED IN REQUEST FOR PROPOSALS NO. 108476, ISSUED APRIL 26, 1962, BY THE AERONAUTICAL SYSTEMS DIVISION FOR THE INVESTIGATION OF A FLEXIBLE ROTOR BLADE DECELERATOR FOR THE RETARDATION AND RECOVERY OF AEROSPACE LOADS.

A NUMBER OF FIRMS INCLUDING BARISH SUBMITTED PROPOSALS IN RESPONSE TO THE SOLICITATION. THE MOST ADVANTAGEOUS PROPOSAL WAS CONSIDERED TO BE THAT SUBMITTED BY THE KELLETT AIRCRAFT CORPORATION AND CONTRACT NO. AF 33/657/- 9187 WAS AWARDED TO THAT FIRM ON JUNE 20, 1962. BY LETTER OF JULY 5, 1962, BARISH PROTESTED THE AWARD ON THE GROUNDS THAT THE SPECIFICATIONS ON WHICH PROPOSALS WERE SOLICITED CONTAINED DATA PROPRIETARY TO BARISH.

IT WAS CONTENDED THAT THE SPECIFICATIONS FOR THE REQUEST FOR PROPOSALS INCLUDED INFORMATION TAKEN DIRECTLY FROM THE REFERENCED PATENT APPLICATION AND THAT THE INFORMATION WAS THE PROPERTY OF BARISHAND COULD NOT BE DISSEMINATED WITHOUT HIS APPROVAL. IN A LETTER OF AUGUST 10, 1962, THE PATENT COUNSEL FOR BARISH ADVISED US:

3. THE DESCRIPTION OF "FLEXIROTOR" APPEARING IN AIR FORCE RFP 108476 COULD ONLY HAVE BEEN PREPARED FROM INFORMATION FURNISHED BY BARISH DIRECTLY OR THROUGH HIS AGENT, VIDYA, INC., IN CONFIDENCE. THOSE DESCRIPTIONS WERE FURNISHED TO THE AIR FORCE IN CONFIDENCE PRIOR TO ITS CONTRACT WITH VIDYA, INC., AND BY MEANS OF A COPY OF PATENT APPLICATION 12011 WHICH WAS SUPPLIED TO THE AIR FORCE AT ITS REQUEST. THE MATTER CONTAINED IN THAT PATENT APPLICATION AND THE DESCRIPTIONS OF "FLEXIROTOR" WERE THE RESULT OF HIGHLY EXPENSIVE RESEARCH AND DEVELOPMENT BY MY CLIENTS OVER A PERIOD OF YEARS AND AT THE COST OF MANY THOUSANDS OF DOLLARS. THE AIR FORCE HAS PUBLISHED THOSE DESCRIPTIONS TO THE WORLD IN RFP 108476 WITHOUT HAVING PAID COMPENSATION. IT TREATS THE INVENTION AS ITS OWN, ALTHOUGH RECEIVING IT IN A CONFIDENTIAL RELATIONSHIP.

4. THE DESCRIPTION IN RFP 108476 IS A CLEAR SUMMARY OF THE DESCRIPTIONS AND CLAIMS MADE IN PATENT APPLICATION 12011. IT CLEARLY DESCRIBES FEATURES OF THE INVENTION WHICH CONSTITUTE THE HEART OF THE INVENTION. DISSEMINATES TO THE PUBLIC THE VERY KNOWLEDGE WHICH BARISH SOUGHT TO PROTECT. THAT PROTECTION HAS BEEN SOUGHT BOTH THROUGH THE VEHICLE OF PATENT WHEN ONE ULTIMATELY ISSUES, AND BY MEANS OF CAREFULLY MAINTAINING THE PROPRIETARY NATURE OF THE INFORMATION WHILE THE PATENT APPLICATION IS PENDING. * * *

WE CONSIDERED THE PROTEST AND IN OUR DECISION B-149295, SEPTEMBER 6, 1962, CONCLUDED THAT, ASSUMING THE DATA WERE PROPRIETARY, WE COULD NOT QUESTION THE LEGALITY OF THE CONTRACT ALREADY AWARDED IN VIEW OF THE FAILURE ON THE PART OF BARISH TO TAKE PROMPT ACTION TO PROTECT HIS INTERESTS.

ON SEPTEMBER 21, 1962, PURCHASE REQUEST NO. 127479 WAS ISSUED BY THE AERONAUTICAL SYSTEMS DIVISION SOLICITING PROPOSALS FROM 16 PROSPECTIVE CONTRACTORS FOR A CONTRACT TO CARRY OUT AN ,ANALYSIS AND EXPERIMENTAL TEST PROGRAM TO INVESTIGATE THE CONCEPT OF UTILIZING MINIMUM WEIGHT-MINIMUM VOLUME DECELERATORS" OF A GIVEN TYPE "AND CONTROLLED SOFT LANDING OF PAYLOADS.' THIS PROCUREMENT WAS PROMPTLY PROTESTED BY THE ATTORNEYS FOR BARISH BY TELEGRAM OF SEPTEMBER 24, 1962, AS MORE FULLY DEVELOPED IN LETTERS OF OCTOBER 3 AND 26, 1962, ON THE GROUNDS THAT THE LATER PURCHASE REQUEST CONTAINS "ADDITIONAL, AMPLIFYING PROPRIETARY INFORMATION TO THAT PREVIOUSLY DISCLOSED" IN PART "IMPLEMENTING AND TENDING TO COMPLETE THE PROPRIETARY INFORMATION PREVIOUSLY WRONGFULLY FURNISHED.' IT IS FURTHER CONTENDED THAT THE DISTRIBUTION OF THE SAID INFORMATION CONSTITUTES THE WRONGFUL DISCLOSURE OF DATA PROPRIETARY TO BARISH AND THAT BARISH'S COMPETITORS ARE THUS PLACED IN AN UNFAIR COMPETITIVE POSITION SINCE THEY, UNLIKE BARISH, NEED NOT AMORTIZE THE COSTS OF THE RESEARCH AND DEVELOPMENT REPRESENTED BY THE DATA INCLUDED IN THE PATENT APPLICATION.

THE AIR FORCE POSITION WITH RESPECT TO THE MATTER, AS STATED IN THE REPORTS SUBMITTED PURSUANT TO OUR REQUESTS IN CONNECTION WITH THE IMMEDIATE AND THE EARLIER PROTEST, IS THAT NO INFORMATION DISSEMINATED UNDER EITHER OF THE PROTESTED PURCHASE REQUESTS MAY BE REGARDED AS PROPRIETARY DATA AS THAT TERM IS DEFINED IN ASPR 9-201 (B). THE CITED REGULATORY PROVISION STATES:

(B) "PROPRIETARY DATA" MEANS DATA PROVIDING INFORMATION CONCERNING THE DETAILS OF A CONTRACTOR'S SECRETS OF MANUFACTURE, SUCH AS MAY BE CONTAINED IN BUT NOT LIMITED TO HIS MANUFACTURING METHODS OR PROCESSES, TREATMENT AND CHEMICAL COMPOSITION OF MATERIALS, PLANT LAYOUT AND TOOLING, TO THE EXTENT THAT SUCH INFORMATION IS NOT DISCLOSED BY INSPECTION OR ANALYSIS OF THE PRODUCT ITSELF AND TO THE EXTENT THAT THE CONTRACTOR HAS PROTECTED SUCH INFORMATION FROM UNRESTRICTED USE BY OTHERS.

IT IS FURTHER STATED THAT THE DATA IN THE PURCHASE REQUESTS ALLEGED TO BE PROPRIETARY WERE OBTAINED BY USING THE ASD TECHNICAL REPORT WHICH RESULTED FROM THE AIR FORCE-VIDYA CONTRACT, AND THAT SUCH DATA, WHILE GENERALLY DESCRIBING WHAT A "FLEXIROTOR" IS, DO NOT IN ANY SENSE IN DEPTH AND DETAIL DESCRIBE HOW IT IS TO BE FABRICATED. FINALLY, IT IS ASSERTED THAT THE SPECIFICATIONS AND CLAIMS OF THE PATENT APPLICATION REMAIN WITHIN THE KNOWLEDGE OF THE INVENTOR, HIS PATENT ATTORNEY AND THE UNITED STATES PATENT OFFICE, AND THUS PRESUMABLY ARE NOT KNOWN TO THE AIR FORCE. THIS STATEMENT APPEARS TO BE DIRECTLY CONTRADICTORY TO THE ABOVE-QUOTED STATEMENT OF BARISH'S PATENT ATTORNEY THAT A COPY OF THE APPLICATION WAS REQUESTED BY AND FURNISHED TO THE AIR FORCE. WE ARE HERE DEALING WITH THE RIGHTS OF AN INDIVIDUAL IN HIS INVENTION ON WHICH A PATENT APPLICATION IS PENDING. NO EXCLUSIVE RIGHTS ARE VESTED IN THE INVENTOR BY THE FILING OF THE APPLICATION. GAYLER V. WILDER, 51 U.S. 477 (1850). HOWEVER, THE INVENTOR PENDING ISSUANCE OF THE PATENT MAY MAINTAIN THE INVENTION AS A TRADE SECRET AND AN ACTION WILL LIE AGAINST ANYONE USING OR DISCLOSING THE SECRET IN VIOLATION OF CONTRACT OR CONFIDENTIAL RELATIONSHIP. DOLLAC CORP. V. MARGON CORP., 164 F.SUPP. 41 (D.C.N.J. 1958); SEE, ALSO, ELLIS, TRADE SECRETS, SEC. 141.

AS STATED EARLIER, THE AIR FORCE POSITION IS THAT THE INFORMATION AT ISSUE WAS OBTAINED BY THE AIR FORCE IN ASD TECHNICAL REPORT NO. 61-660 FURNISHED BY VIDYA, INC., PURSUANT TO THE TERMS OF CONTRACT NO. AF 33/616/ -7613. UNDER PARAGRAPH 19 (F) OF THE CONTRACT, WHICH IS QUOTED ABOVE, THE AIR FORCE OBTAINED FROM VIDYA THE RIGHT TO USE AND DISCLOSE IN ANY MANNER AND FOR FOR ANY PURPOSE ANY DATA SPECIFIED TO BE DELIVERED UNDER THE TERMS OF THE CONTRACT, EXCEPT THAT FOR SUCH DATA ,NOW OR HEREAFTER COVERED BY COPYRIGHT" AND NOT ORIGINATED IN THE PERFORMANCE OF THE CONTRACT THE RIGHT OF USE AND DISCLOSURE IS LIMITED TO THE RIGHT OF CONTRACTOR TO GRANT SUCH LICENSE WITHOUT BECOMING LIABLE FOR THE PAYMENT OF COMPENSATION THEREFOR. THE USE OF THE WORD "AND" INDICATES THAT BOTH CONDITIONS MUST OCCUR BEFORE THE GOVERNMENT'S RIGHT TO THE DATA IS SO LIMITED. IN VIEW OF OUR UNDERSTANDING THAT, EXCEPT FOR THE WORD "FLEXIROTOR," THE INFORMATION IS NOT OF THE TYPE WHICH MAY BE COVERED BY COPYRIGHT, WE CONCLUDE THAT THE LIMITATION DOES NOT APPLY. HOWEVER, IT IS CONTENDED BY BARISH THAT THE AIR FORCE DID NOT IN ANY EVENT OBTAIN RIGHTS TO THE INFORMATION IN QUESTION UNDER THE DATA CLAUSE BECAUSE THE INFORMATION IS NOT "SPECIFIED TO BE DELIVERED" UNDER THE CONTRACT AND IS, THEREFORE, OUTSIDE THE SCOPE OF "SUBJECT DATA.'

ASSUMING THAT THE INFORMATION IS INCLUDED IN "SUBJECT DATA" THE RIGHTS CLAIMED BY THE AIR FORCE APPEAR TO BE INCONSISTENT WITH THE SPECIFIC EXCLUSION OF THE INVENTION DISCLOSED IN THE PATENT APPLICATION FROM THE PROVISIONS OF PARAGRAPH 18 (B) (1) OF THE AIR FORCE-VIDYA CONTRACT QUOTED ABOVE. UNDER THE CITED CONTRACT PROVISION THE AIR FORCE OBTAINED FROM VIDYA A ROYALTY-FREE LICENSE TO PRACTICE OR CAUSE TO BE PRACTICED ANY INVENTION, IMPROVEMENT OR DISCOVERY, WHETHER OR NOT PATENTABLE, COMING WITHIN THE SCOPE OF THAT PROVISION. SINCE PATENT APPLICATION NO. 12011 WAS SPECIFICALLY EXCLUDED, IT IS CLEAR THAT THE PARTIES INTENDED THAT THE AIR FORCE SHOULD NOT OBTAIN THE RIGHT TO PRACTICE OR CAUSE TO BE PRACTICED THE INVENTION INCLUDED THEREIN.

IN LIGHT OF THE FOREGOING, WE CONCLUDE THAT IF THE INFORMATION IN QUESTION MAY BE REGARDED AS ,SUBJECT DATA" (AND WE MAKE NO DETERMINATION ON THIS POINT) THE RIGHT OF THE AIR FORCE TO USE IT IN THE FORM IT APPEARS IN THE PURCHASE REQUESTS IS SUBJECT TO THE CONDITION THAT SUCH USE DOES NOT CONSTITUTE THE PRACTICE OF OR CAUSING TO PRACTICE THE INVENTION.

WE HAVE NOT BEEN ABLE TO FIND ANY LEGAL AUTHORITY ESTABLISHING A DEFINITION FOR THE WORD ,PRACTICE" IN THIS CONTEXT. CERTAINLY THE WORD MUST LOGICALLY BE CONSTRUED TO ENCOMPASS THE PUTTING TO PRACTICAL USE OR APPLICATION OF THE INVENTION. THEREFORE, THE INVENTION COVERED BY THE PATENT APPLICATION MAY NOT BE PUT TO PRACTICAL USE BY THE AIR FORCE, NOR MAY THE AIR FORCE CAUSE THE INVENTION TO BE PUT TO PRACTICAL USE. GOING FURTHER, SINCE THE PATENT RIGHTS CLAUSE CLEARLY EMBRACES INVENTIONS, IMPROVEMENTS AND DISCOVERIES, THE EXCLUSIVE RIGHT TO WHICH MAY BE PROTECTED ONLY BY THE MAINTENANCE OF SECRECY AGAINST ALL EXCEPT THOSE IN A CONFIDENTIAL OR CONTRACTUAL RELATIONSHIP (AND ESPECIALLY SINCE THE SPECIFICALLY EXCLUDED ITEM FALLS IN SUCH CATEGORY), WE THINK IT LOGICAL THAT THE PROTECTION OF THE EXCLUSION FROM THE OPERATION OF THE CLAUSE EXTENDS TO THE DISSEMINATION OF SUCH INFORMATION, EITHER PIECEMEAL OR AT ONCE, AS WOULD ENABLE ANOTHER PARTY TO PRACTICE THE INVENTION OR CAUSE IT TO BE PRACTICED. OTHERWISE WE WOULD BE PRESENTED WITH THE ANOMALY WHEREBY THE AIR FORCE COULD NOT PRACTICE THE INVENTION WITHOUT A LICENSE, BUT COULD DISSEMINATE THE NECESSARY INFORMATION TO PERMIT ANYONE ELSE TO PRACTICE IT WITHOUT REGARD TO THE RIGHTS OF THE INVENTOR.

THE ESSENTIAL QUESTION PRESENTED THEN IS WHETHER THE INFORMATION DISCLOSED BY THE AIR FORCE IN THE PURCHASE REQUESTS TO THIS POINT IN TIME WOULD CONSTITUTE SUCH DISSEMINATION (AND, PRESUMABLY, THE CURRENT PURCHASE REQUEST AS WELL AS THE EARLIER ONE IS AVAILABLE TO ANY INTERESTED PERSON) AS TO PERMIT AN INFORMED READER TO PRACTICE THE INVENTION.

AS INDICATED EARLIER, THE PARTIES ARE IN COMPLETE DISAGREEMENT AS TO THIS POINT. THE PATENT ATTORNEY FOR BARISH HAS CHARACTERIZED IT IN THE PORTION OF A LETTER PREVIOUSLY QUOTED AS THE ,HEART" OF THE INVENTION. ON THE OTHER HAND, THE AIR FORCE HAS STATED WITH EQUAL VIGOR THAT THE INFORMATION DISCLOSED IS INSUFFICIENT TO PERMIT ANOTHER PARTY TO FABRICATE AN ARTICLE COVERED BY THE PATENT APPLICATION.

OUR OFFICE, LACKING THE KNOWLEDGE TO DECIDE INDEPENDENTLY WHAT IS ESSENTIALLY A HIGHLY TECHNICAL FACTUAL QUESTION, HAS ESTABLISHED A PRESUMPTION IN FAVOR OF THE CORRECTNESS OF THE POSITION OF THE ADMINISTRATIVE OFFICE. SEE 16 COMP. GEN. 1105, 1106. IN THIS INSTANCE, HOWEVER, WE HAVE BEEN FURNISHED WITH A SWORN AFFIDAVIT FROM DR. THEORDORE THEORDORSEN, FORMER CHIEF OF THE PHYSICAL RESEARCH DIVISION OF NACA, WHICH STATES IN PERTINENT PART:

THE MAJOR AREA OF HIS INTEREST IS AND HAS BEEN IN THE FIELD OF AERO DYNAMICS OF PROPELLERS AND ROTORS. HE IS AND HAS BEEN FOR SOME TIME FAMILIAR WITH THE "FLEXIROTOR" AND THE SUBJECT MATTER OF PATENT APPLICATION NO. 12011. HE HAS EXAMINED THE EXCERPT FROM RFP 108476 QUOTED ON PAGE 2 OF THE LETTER OF FRANK H. BORDEN DATED AUGUST 10, 1962, AND FROM PARAGRAPH 2 OF THE STATEMENT OF WORK OF EXHIBIT A TO PR NO. 127479.

IN HIS OPINION THE DESCRIPTIONS CONTAINED CONSTITUTE A COMPLETE DESCRIPTION OF THE INVENTION. IN FACT, THE DESCRIPTIONS REFERRED TO CONSTITUTE COMPLETE DISCLOSURE OF THE INVENTION, AS EXPLAINED TO HIM BY THE INVENTOR APPROXIMATELY TWO YEARS AGO. HE NEITHER HAS, NOR NEEDS ADDITIONAL INFORMATION, IN ORDER TO FULLY UNDERSTAND THE INVENTION AND ITS METHOD OF OPERATION. A QUESTION MIGHT ARISE AS TO WHETHER OR NOT AN INVENTION SO DESCRIBED WOULD BE OF PRACTICAL VALUE, BUT IF IT WERE KNOWN THAT IT DID WORK, THE DESCRIPTION WOULD BE SUFFICIENT TO PERMIT ITS FABRICATION. ANY COMPETENT AERO-DYNAMACIST IN POSSESSION OF SUCH INFORMATION WOULD BE ABLE TO COMMENCE WORK TO BUILD A "FLEXIROTOR.' THE COURSE OF THE PERFORMANCE OF WORK NORMAL ENGINEERING PROBLEMS OF "BUGS" WOULD, OF COURSE, HAVE TO BE RESOLVED, AS IN ANY DEVELOPMENT EFFORT. NOTHING MORE WOULD BE NECESSARY TO PERMIT AN AERO-DYNAMACIST TO PERFORM WHAT FUNCTIONS ARE NECESSARY TO BUILD THE "FLEXIROTOR.'

IN HIS OPINION THE DISCLOSURES CONSTITUTE A COMPLETE AND THOROUGH DESCRIPTION OF THE BARISH INVENTION, REQUIRING NO FURTHER DISCLOSURES TO COMMUNICATE A COMPLETE UNDERSTANDING OF IT.

WE THINK THAT THE EVIDENCE SUBMITTED TO THIS POINT IS SUFFICIENT TO OVERCOME THE PRESUMPTION OF THE CORRECTNESS OF THE ADMINISTRATIVE POSITION. IN SUMMARY, THEREFORE, THE CASE APPEARS TO BE THAT BARISH, RELYING UPON THE POLICY EXPRESSED IN THE AIR FORCE FORM 91, DISCLOSED TO THE AIR FORCE INFORMATION CONCERNING HIS CLAIMED INVENTION; THAT THE AIR FORCE THEREAFTER UNDERTOOK THROUGH THE VIDYA CONTRACT TO OBTAIN A TECHNICAL EVALUATION AND INVESTIGATION OF THE SCIENTIFIC BASES AND OPERATIONAL POTENTIALITIES OF THE PROFERRED INVENTION; THAT THE VIDYA CONTRACT WAS CONSENTED TO BY BARISH UNDER THE EXPRESS CONDITION, STATED BOTH IN THE AIR FORCE CONTRACT WITH VIDYA AND IN THE BARISH-VIDYA CONTRACT, OF WHICH THE AIR FORCE WAS ON NOTICE, THAT NO RIGHTS TO PRACTICE THE BARISH INVENTION WERE TO BE ACQUIRED BY EITHER THE AIR FORCE OR VIDYA; THAT THE AIR FORCE, RELYING UPON A TENUOUS PROCESS OF INTERPRETATION OF CERTAIN OTHER TERMS OF THE VIDYA CONTRACT, DISCLOSED ESSENTIAL FEATURES OF THE INVENTION ON THE THEORY THAT THE REPORT OBTAINED UNDER THE CONTRACT AS TO THE PRINCIPLES AND OPERATION OF THE INVENTION NECESSARILY INCLUDED A DESCRIPTION OF THE NATURE OF THE INVENTION ITSELF, WHICH THEREFORE BECAME AVAILABLE FOR ITS USE AS A PART OF THE SUBJECT DATA ACQUIRED UNDER THE CONTRACT.

WHILE THE AIR FORCE URGES THAT THE INFORMATION CONTAINED IN SECTION 2.1 OF THE STATEMENT OF WORK INCLUDED IN PURCHASE REQUEST NO. 127479 WAS A PART OF THE "DISCLOSURE MATERIAL" SUBMITTED TO IT UNDER THE VIDYA CONTRACT, WE DO NOT UNDERSTAND IT TO BE CONTENDED THAT THE CONCEPT EMBODIED THEREIN WAS KNOWN TO IT OR TO ANYONE PRIOR TO ITS PRESENTATION BY BARISH UNDER THE PROTECTION OF ITS FORM 91, OR THAT THE CONCEPT WAS IN ANY WAY THE PRODUCT OF THE VIDYA CONTRACT OR OF ANY WORK PERFORMED BY BARISH IN THE COURSE OF HIS EMPLOYMENT AS A CONSULTANT BY VIDYA IN THE PERFORMANCE THEREOF.

THE AIR FORCE ARGUES FURTHER THAT "SINCE THE EXTENT AND CONTENT OF THE GENERIC DESCRIPTIVE MATERIAL CONTAINED IN PARAGRAPH 2.1 IS FAR LESS DEFINITIVE THAN THE EXTENT AND CONTENT PREVIOUSLY DISCLOSED TO PROSPECTIVE AIR FORCE R AND D CONTRACTORS UNDER THE KELLETT AWARD, IT SHOULD NOT BE CONSIDERED THAT THERE CAN BE VIOLATION OF MR. BARISH'S ALLEGED PROPRIETARY INFORMATION SINCE MORE DETAILED INFORMATION HAS BEEN PREVIOUSLY DISCLOSED BY APPROPRIATE R AND D COMPETITIVE PROCUREMENT STEPS WHICH HAVE MATURED INTO THE KELLETT CONTRACT.' TO THE EXTENT THAT THIS ARGUMENT MAY BE BASED UPON THE VIEW THAT OUR PRIOR DECISION SUPPORTED THE PROPRIETY OF THE PROCUREMENT PROCEDURES WHICH RESULTED IN THE KELLETT CONTRACT, IT IS ERRONEOUS: THAT DECISION WAS NOT BASED UPON ANY JUDGMENT THAT THE DISCLOSURE INVOLVED THEREIN WAS AUTHORIZED, BUT SOLELY UPON THE NARROW GROUND THAT IN THE CIRCUMSTANCES WE DID NOT FEEL JUSTIFIED IN RECOMMENDING CANCELLATION OF THE CONTRACT. IF IN FACT THE DISCLOSURE THEREBY MADE WAS IN VIOLATION OF BARISH'S RIGHTS, UNDER PARAGRAPH 5 OF FORM 91, TO HAVE ITS DISCLOSURES "HANDLED IN ACCORDANCE WITH ESTABLISHED GOVERNMENTAL PROCEDURES FOR SAFEGUARDING SUCH ARTICLES OR INFORMATION AGAINST UNAUTHORIZED DISCLOSURES," WE CANNOT AGREE THAT ONE WRONGFUL DISCLOSURE AUTOMATICALLY TERMINATED HIS RIGHTS TO ANY FURTHER PROTECTION, OR THAT THE DAMAGES TO WHICH HE MIGHT BE ENTITLED THEREFOR, IF ANY, COULD NOT BE INCREASED BY FURTHER VIOLATIONS. SEE PHILADELPHIA EXTRACTING CO. V. KEYSTONE EXTRACTING CO., 176 F. 830 (C.C.PA. 1910).

IN DECISIONS OF DECEMBER 22, 1960, B-143711, AND AUGUST 28, 1961, 41 COMP. GEN. 148, WE HELD THAT INVITATIONS FOR BIDS WHICH INCLUDED AS A PART OF THE SPECIFICATIONS MATERIAL WHICH THE GOVERNMENT HAD NOT ACQUIRED THE RIGHT TO USE SHOULD BE CANCELED, IN THE INTEREST OF PRESERVING THE INTEGRITY OF THE GOVERNMENT AS A CONTRACTOR. WE BELIEVE THAT THE DESIRABILITY OF AVOIDANCE OF POSSIBLE SUBSTANTIAL LIABILITY OF THE GOVERNMENT FOR DAMAGES IN SUCH CASES FURNISHES FURTHER SUPPORT FOR THIS POSITION. IN THIS RESPECT THERE ARE PRESENT CONSIDERATIONS WHOLLY DIFFERENT FROM THOSE INVOLVED IN THE USE BY OR FOR THE GOVERNMENT OF EXISTING PATENTS UNDER THE PROVISIONS OF 28 U.S.C. 1498, SINCE THAT STATUTE DEFINITELY FIXES THE RIGHTS AND LIABILITIES BOTH OF PATENTEES AND OF THE GOVERNMENT FOR USE OF PATENTS BY OR FOR THE GOVERNMENT, WHEREAS AS STRESSED IN THE MEMORANDUM OF THE STAFF JUDGE ADVOCATE, AFLC, THE RIGHTS OF THE OWNER OF AN UNPATENTED TRADE SECRET DEPEND UPON THE CONTINUANCE OF SECRECY THEREOF. THE CONSEQUENCES OF A BREACH OF SECRECY BY ONE STANDING IN A CONFIDENTIAL RELATIONSHIP WITH THE PROPRIETOR WOULD THEREFORE APPEAR TO BE MORE SERIOUS, WHILE AT THE SAME TIME LESS READILY MEASURABLE, THAN THOSE INVOLVED IN GOVERNMENTAL USE OF A PATENT PURSUANT TO 28 U.S.C. 1498.

WE CONCLUDE THAT ON THE RECORD PRESENTED THE RULE OF THE CASES LAST CITED IS APPLICABLE IN THIS INSTANCE, AND THAT THE PURCHASE REQUEST IN QUESTION SHOULD BE WITHDRAWN.