The Bayh–Dole Act & Public Rights in Federally Funded Inventions: Will The Agencies Ever Go Marching In?

Ryan Whalen | July 1, 2015

For over thirty years, the Bayh–Dole Act has granted federal agencies the power to force the recipients of federal research funding to license the resulting inventions to third parties. Despite having this expansive power, no federal agency has ever seen fit to utilize it. This Note explores why Bayh–Dole march-in rights have never been used, and proposes reforms that would help ensure that, in the instances when they are most required, the public is able to access the inventions it bankrolled. There have been five documented march-in petitions since the Bayh–Dole Act was passed into law. Each petition was dismissed by the funding agency without progressing to the march-in proceeding stage. Even if one of these petitions had made it to the proceeding stage it is unlikely that a march-in would have occurred. The Bayh–Dole Act’s march-in rights are designed in such a manner that makes their effective use highly unlikely. Procedurally, they offer expansive protections for patent holders and few safeguards for those who petition for march-in. A few minor reforms to the system could help appropriately balance the march-in system’s design. Potential reforms include instituting an appeal process, mandating a duty to use “best efforts” to bring subject inventions to the point of practical application and report on those efforts, clarifying the meaning of Bayh–Dole’s “reasonable terms” requirement, and instituting a requirement that subject inventions be marketed in the United States at internationally competitive rates. In addition, a requirement that subject inventions be licensed via public auction rather than private negotiation would help ensure that those best suited to commercializing inventions have the chance to secure the rights to them.