IP News: Can Bayh-Dole Void an Exclusive License?

This in-depth article from IP blog Research Enterprise discusses the implications of a particular provision of the 1980 Bayh-Dole Act in US patent law.

The Bayh-Dole Act concerns US patent ownership in cases when the research that led to the patent was federally-funded, so government contractors and universities pay it particular attention. Before Bayh-Dole was passed, such patents just belonged to the federal government; this allows for organizations such as nonprofits, small businesses, and universities writing up a contract with the federal agency backing them for owning or partially owning that patent themselves.

This article is about a provision in the Bayh-Dole Act that’s never actually been used– so, ominously, there’s no precedent for how it would actually work out if it ever were. The gist is, if a federally-funded inventor invents something important (e.g. the cure for cancer) and then uses their Bayh-Dole contracted patent license to sit on it (i.e. doesn’t then make that patented cancer medicine and sell it), the federal agency that funded them has the legal option to “march in”, investigate and prove that they’re using the patent wrong (as defined under Bayh-Dole), and either require them to authorize others to share the patent rights, or even re-issue or give away that patent license to somebody else instead.

This latest article in a blog that has discussed Bayh-Dole extensively (and in fact includes also a Guide to Bayh-Dole) raises here a few nuanced points about the “goofiness” of some of the provision language, and speculates how “marching in”, if or when it ever actually happens, might collide with other patent law in practice.

Read the full article here!