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James Kearney is an experienced government contracts attorney who joined the Northern Virginia office of Womble Carlyle last year after 28 years at Reed Smith. Jim's practice is focused in the areas of government contracts, export controls, and international trade -- all rapidly changing aspects of the law. Jim represents government contractors in all areas of public procurement. Jim is a graduate of the University of Virginia School of Law.

Jim was recently interviewed by Jonathan Groner, senior communications counsel for Womble Carlyle, on the rapidly changing world of government contracts law. Read part II of their interview.

Q: Can you give any examples in which a company's patent or other IP rights were lost to the government or to the public domain because the company didn't take the proper steps to protect them -- or any cases in which the rights weren't actually lost, but the company had to undertake expensive litigation to hold on to them?

JK: Several years ago, a client used funding from a federal government agency to finance early research and development of a new technology. Although the funding was a valuable resource to the client, the client had not fully understood that if an invention is first conceived or first actually reduced to practice in the performance of a federally funded activity, such as a contract, the government acquires significant rights in the patentable item or technology -- including the right to share knowledge and data about the item with other companies if it meets a government purpose. In that case, after the fact, we approached the federal agency and successfully negotiated a modification to the contract that permitted the client to take back all of the rights it had unwittingly given up. But that is a success story that is not often achieved. Although it was not a client, I am aware of another company that was recently determined to have forfeited title to a patent when it failed to disclose the invention to the government in the manner and within the time called for in the applicable federal acquisition regulations.

Q: You mentioned that universities, research institutions, and emerging companies now play a very significant role in government contracting. What challenges does a government contracts lawyer face in representing those types of organizations, as opposed to representing well-established private corporations?

JK: Universities and other non-profit research institutions are very different entities from commercial contractors. They are first and foremost places that pursue knowledge, not profit. The accounting standards for non-profits can be materially different, and this affects how performance costs under a federal contract are allocated and justified.

Moreover, the culture, particularly in universities, is one of unencumbered discussion of ideas and thoughts, which can be inconsistent with security and export-control requirements faced by contractors performing work for defense or intelligence agencies. The presence of many foreign nationals on campuses, and the presence of foreign nationals as the core of the technology workforce of many emerging technology contractors, makes the challenge of preventing unauthorized exports to foreign nationals a real problem for these entities. It has come as a shock to the university community, for example, to hear that when performing under some federal contracts, they are not free to involve talented foreign national professors, research assistants, or students, without first obtaining required export licenses. Finally, many of these entities -- both universities and emerging companies -- do not have a long history of federal contracting and do not have the infrastructure in place to ensure both the recognition of many regulatory requirements and compliance with these requirements.

Q: Have the export-control restrictions, and the limitations on involving foreign nationals, tightened up in the post-9/11 war on terrorism?

JK: Since 9/11, the actual export control regulations have not changed all that much. What has significantly changed, however, is the government's heightened awareness of sensitive technologies -- technologies perceived to have national security or foreign policy concerns were they to fall in the hands of some foreign nationals -- and its more vigorous enforcement of the export control regulations.

For example, after 9/11 and the experiences of wars in Afghanistan and Iraq, the development of military applications for robotics technology has accelerated, and the sensitivity of this technology as a decisive war-fighting tool has grown commensurately. Similarly, thermal-imaging technology, which has been used extensively in civilian fire-fighting applications in camera-like devices permitting people to "see" in smoky environments, is now being viewed as critical technology for urban and other battlefield scenarios. Many bio-agents and chemical agents have taken on heightened significance because of concerns about chemical and biological warfare applications. As a result, the government is more frequently and aggressively enforcing the regulations.

If you are interested in discussing government contracts, export controls, international trade or other related issues, please contact Jim at (703) 394-2214 or other members of the Construction and Government Contracts Group at Womble Carlyle.

- By Jonathan Groner