For journalists writing about march-in rights today, this is how it works. If you get money from the federal government for the R&D leading to an invention, there is typically a contract that gives the funder certain rights in any patents that result from the funded work.
Inventions funded in whole OR in part by the federal government are defined by law as “subject patents” 35 USC 201(e). Inventions and funding agreements are also defined in 201.
By contract, in the funding agreement, the funding agency allows the non-federal party to take title to the invention, but the funder retains some rights in the invention. One of those rights is the march-in right.
In a march-in case, the non-federal entity retains ownership in the patent, but the funding agency can grant licenses to third parties to use the inventions. These non-voluntary licenses include royalties to patent holders.
The federal government can’t issue the march-in licenses unless 4 conditions are met, set out by statute in 35 USC 203. The problem is, the funding agencies have let the patent holders get away with murder, and don’t use the march-in remedy for abuses of rights.
The federal government has other rights, including a worldwide royalty free license to use (by or for the government) the invention. The march in is more limited and requires royalties to patent holders. If Biden wanted to be aggressive, he would use the royalty free license.
There have been several march-in cases filed, some have been settled, some threatened but resolved before a formal filing, some with pre-decision concessions and many rejected with no public interest outcomes. Some more context on KEI’s Bayh-Dole timeline.
Note also the US government has other mechanisms to issue compulsory licenses on patents, including but not limited to the hundreds of FAR 52.227-1 authorization and consent agreements in recent years.
Links to the draft guidance on the use of march in rights.
Federal Register notice *public inspection link*
NIST Bayh Dole website:
Public webinar event page: