In the 09-742 GAO report addressing the government’s right to assert ownership over federal funded inventions, the government produced an important survey on the current understanding among leading federal research agencies about march-in rights under the Bayh-Dole system. This report has considerable implications for cutting edge nano and clean technologies, which often are based on cutting-edge research stemming from universities and federal agencies.
In a march-in situation, the government can force a compulsory license to a patent which stemmed from federally funded research dollars. However, a march-in had never been completed in the thirty or so years of Bayh-Dole, although several attempts have been started (three march-in petitions were filed with the NIH, one in 1997 and two in 2004). Organizations such as PUBPAT, which tend to attack the patent system for "undeserved patents," undoubtedly will continue to monitor the potential use of march-in rights.
Clearly, those associated with commercializing federally funded inventions should be aware of potential issues surrounding the march-in authority of the federal government. Their 09-742 report provides a useful update for consideration. Although a march-in right has never been exercised, organizations such as PUBPAT will consider its use in attacking patents they believe could harm the public. The ongoing controversial Myriad litigation, over gene patents, illustrates the potential outcomes.