[author: J. Steven Rutt]
Another “march-in petition” has been filed recently as part of the on-going implementation of the Bayh-Dole system. The attached web page provides access to the petition, cover letter, and broader context. Now, several groups are seeking march-in against a series of AIDS/HIV related drug patents. Funding for the underlying inventions was provided by the NIH.
No march-in petition has ever been granted during the 32 years of the Bayh-Dole system. If one were granted, the grant would likely have a major impact on the Bayh-Dole system, extending beyond the particular case at hand. Best I can tell, the last march-in petition was filed about two years ago, but the petition failed (see our prior blog entry).
Review of the patent literature confirms that many nanotechnology and clean tech inventions arise from federal funding and invoke the Bayh-Dole system. Funding comes from the NNI and Department of Energy, for example. However, it is not unusual to find investors and executives in these areas to be relatively unaware of the Bayh-Dole system and its legal implications.
I will note briefly that I found the petition dialog interesting for attempting to legally separate out what appears to be (1) a primary use of the patented invention, from (2) secondary uses of the patented invention, or what is called a “dependent technology.”