Asset Protection

Martensen IP helped Senseeker Engineering navigate government IP regulations to protect their assets.

Martensen IP Helps Provider of Infrared Sensing Technology and Government Supplier Assert Its Rights to Critical IP

Senseeker Engineering is a small California based company that creates digital readout integrated circuits (DROICs) and designs that are used in infrared image-sensing systems. The U.S. government is one of the organization’s primary customers.

Senseeker came to Martensen IP for assistance on its assertions of IP ownership to the government. The company already held a number of patents on its technology, but was having trouble dealing with the government contracting officer. In particular, Senseeker was struggling to get clarity on what the company did and did not own regarding its intellectual property.

One of the most significant issues involved a circuit board for infrared sensor technology. Senseeker developed the circuit board at its own expense, giving the government what is called “limited rights.” While there was no question who owned it, the government asserted that a schematic of the circuit board that Senseeker provided was what is called “form, fit, and function,”.

If this was true, the government would have unlimited rights to a schematic which embodied the very essence of the circuit designed by Senseeker and Senseeker would lose its competitive advantage in follow on competition. In other words, the government’s assertion was putting the company’s ongoing existence at risk.

Redefining the Deliverables to Protect the Company’s Core Technology

From Senseeker’s perspective and ours, the detailed schematic was, for all intents and purposes, the circuit board. It showed exactly what the board looks like and how it works—essentially everything you would need to know to produce it.

The “form, fit, and function” statute was written to enable the government to integrate intellectual property, not to assume ownership of or confiscate that property, which was what the government was attempting to do. To resolve the issue, we had long conversations with the government attorney, who was Senseeker’s point of contact but not an IP expert, and explained the subtle differences between schematics and integration tools.

Ultimately, over the course of six months, we helped Senseeker prevail. By redefining the project’s deliverables and removing the schematic from the list of work product that the government would receive without impacting Senseekers’s performance obligations under the contact, we enabled Senseeker to thwart the government’s attempt to circumvent their ownership rights to the company’s core technology.

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