On April 28, 2022, Covington convened experts across our practice groups for the Covington Robotics Forum, which explored recent developments and forecasts relevant to industries affected by robotics.  Winslow Taub, Partner in Covington’s Technology Transactions Practice Group, and Jennifer Plitsch, Chair of Covington’s Government Contracts Practice Group, discussed the robotics issues presented in private transactions and government contracts, highlights of which are captured here.  A recording of the forum is available here until May 31, 2022.

            A business in the robotics space may acquire, develop, and use a variety of technology assets, including specialized hardware, control software, and AI models that depend on large training data sets.  Understanding these assets, and the forms of IP protection available for them, is critical when engaging in a transaction the robotics space—whether an M&A transaction, a commercial transaction, or a transaction with the government.

            By way of example, in an M&A transaction, the seller may rely on disparate sets of data (including sets of data acquired from its customers) in developing robotics products.  Verifying that the seller has sufficient rights to that data is a critical part of diligence.  And the data is often processed heavily in order to make it useful for a robotics application.  Because data rights are not protectable under patent and copyright laws, it is important to verify that adequate contractual protections are in place to secure exclusive use by the seller.

            As another example, in commercial agreements for the deployment of robotics technology, it is important to take special care in negotiating the rights and obligations during the “support” phase of the project, after the solution is put into operation.  The technology provider will often require access to data from the production environment in order to fix bugs and improve performance—including sets of production data that can be used to further train the relevant AI models.

            The U.S. Government frequently collaborates in the development of specialized technology, or tests or procures finished products from the private sector.  The U.S. Government has specialized rules which must be carefully considered when entering into any transaction with the U.S. Government as these rules are often complicated and can impose significant compliance obligations.  Collaboration or development agreements should be carefully considered as many standard government procurement requirements do not easily translate to new and emerging technologies.

            U.S. Government rights in intellectual property and data related to government agreements should be carefully considered before entering into any U.S. Government agreement or acquiring any technology that has been funded by the U.S. Government.  If a company accepts U.S. Government funding to develop robotics technology, there may be significant intellectual property implications if patentable technology is conceived of or for the first time actually reduced to practice in the performance of the government agreement.  The inventor will hold the patent, but the U.S. Government will receive a license and potentially greater rights if certain reporting and other requirements are not met.  This issue can also arise for companies acquiring already developed technologies that may have been developed with U.S. Government funding as the U.S. Government rights will remain after the transaction. 

            The U.S. Government also generally obtains unlimited rights in data first produced or delivered in the performance of a U.S. Government contract, and companies should think about what data might be produced or delivered in the course of performance of an agreement with the government, and consider what consequences could result from the U.S. Government receiving the right to use, share and even publish such data.  This issue is particularly important in consideration of the potential impact on trade secret protections for data in which the U.S. Government receives unlimited rights.

            We will provide additional updates about the topics covered in the 2022 Covington Robotics Forum and other developments related to robotics on our blog.  To learn more about our work related to this post, please visit the Technology IndustryTechnology Transactions and Government Contracts pages of our web site.  For more information on developments related to AI, IoT and connected and automated vehicles, please visit our AI Toolkit and our Internet of ThingsConnected and Autonomous Vehicles and Data Privacy and Cybersecurity websites.

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Photo of Jennifer Plitsch Jennifer Plitsch

Jennifer Plitsch leads the firm’s Government Contracts Practice Group, where she works with clients on a broad range of issues arising from both defense and civilian contracts including contract proposal, performance, and compliance questions as well as litigation, transactional, and legislative issues.

She…

Jennifer Plitsch leads the firm’s Government Contracts Practice Group, where she works with clients on a broad range of issues arising from both defense and civilian contracts including contract proposal, performance, and compliance questions as well as litigation, transactional, and legislative issues.

She has particular expertise in advising clients on intellectual property and data rights issues under the Federal Acquisition Regulations (FAR) and obligations imposed by the Bayh-Dole Act, including march-in and substantial domestic manufacturing. Jen also has significant experience in negotiation and compliance under non-traditional government agreements including Other Transaction Authority agreements (OTAs), Cooperative Research and Development Agreements (CRADAs), Cooperative Agreements, Grants, and Small Business Innovation Research agreements.

For over 20 years, Jen’s practice has focused on advising clients in the pharmaceutical, biologics and medical device industry on all aspects of both commercial and non-commercial agreements with various government agencies including:

  • the Department of Veterans Affairs (VA);
  • the Department of Health and Human Services (HHS), including the Biomedical Advanced Research and Development Authority (BARDA), the National Institutes of Health (NIH), and the Centers for Disease Control (CDC);
  • the Department of Defense (DoD), including the Defense Threat Reduction Agency (DTRA), the Defense Advanced Research Projects Agency (DARPA), and the Joint Program Executive Office for Chemical Biological Defense (JPEO-CBRN); and
    the U.S. Agency for International Development (USAID).

She regularly advises on the development, production, and supply to the government of vaccines and other medical countermeasures addressing threats such as COVID-19, Ebola, Zika, MERS-CoV, Smallpox, seasonal and pandemic influenza, tropical diseases, botulinum toxin, nerve agents, and radiation events. In addition, for commercial drugs, biologics, and medical devices, Jen advises on Federal Supply Schedule contracts, including the complex pricing requirements imposed on products under the Veterans Health Care Act, as well as on the obligations imposed by participation in the 340B Drug Pricing program.

Jen also has significant experience in domestic sourcing compliance under the Buy American Act (BAA) and the Trade Agreements Act (TAA), including regulatory analysis and comments, certifications, investigations, and disclosures (including under the Acetris decision and Biden Administration Executive Orders). She also advises on prevailing wage requirements, including those imposed through the Davis-Bacon Act and the Service Contract Labor Standards.

Photo of Winslow Taub Winslow Taub

Winslow Taub focuses his practice on patent litigation, primarily for clients in the high technology space. He has handled patent disputes involving a wide variety of technologies, including cellular communications, wired and wireless networking, graphics processing, and information security. In addition to litigating…

Winslow Taub focuses his practice on patent litigation, primarily for clients in the high technology space. He has handled patent disputes involving a wide variety of technologies, including cellular communications, wired and wireless networking, graphics processing, and information security. In addition to litigating in federal court, he has represented clients in Section 337 investigations before the ITC and in inter partes review proceedings before the PTAB. He currently serves as vice-chair of the firm’s Patent Litigation practice group.

Trevor Bernardo

Trevor Bernardo is an associate in Covington’s Washington, DC office. As a member of the Communications and Media Industry Group and Public Policy Group, Trevor represents and advises clients pursuing public policy strategies and conducting commercial transactions involving entities regulated by the Federal…

Trevor Bernardo is an associate in Covington’s Washington, DC office. As a member of the Communications and Media Industry Group and Public Policy Group, Trevor represents and advises clients pursuing public policy strategies and conducting commercial transactions involving entities regulated by the Federal Communications Commission and state public utility commissions. He also maintains an active pro bono practice. Before joining Covington, Trevor worked on various state and federal campaigns across the country.