Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
Here’s the complete FAQ:
MPEP 300 - Ownership and Assignment (17)
The placement of the government license rights statement in a patent application depends on whether there are references to related applications:
- If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
- If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.
This placement is specified in 37 CFR 1.77(b)(1)-(3).
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The purpose of including the government license rights statement in patent applications is to:
- Acknowledge the government’s support in the development of the invention
- Inform the public and potential licensees of the government’s rights in the invention
- Ensure compliance with federal regulations regarding inventions made with government support
- Facilitate the government’s ability to exercise its rights in the invention if necessary
This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:
‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’
This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.
What is a ‘subject invention’ in the context of government-funded research?
A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C. 201(e) as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.’ This definition is crucial for determining the government’s rights in inventions made during federally sponsored research.
For more information on federal funding, visit: federal funding.
For more information on patent rights, visit: patent rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
What are the government’s rights in inventions made by nonprofit organizations and small businesses?
The government’s rights in inventions made by nonprofit organizations and small businesses under federally sponsored research are specifically addressed in MPEP 310. According to the manual:
“A funding agreement may provide that the government shall have the right to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees.”
Additionally, the government retains:
- A nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world.
- The right to require the contractor to grant licenses to responsible applicants under certain conditions (march-in rights).
- The right to require written agreements from contractors to ensure that inventions are made available for public use on reasonable terms.
These provisions, outlined in 35 U.S.C. 202, balance the interests of small entities, the government, and the public in federally funded inventions.
For more information on federally sponsored research, visit: federally sponsored research.
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:
- Include the government license rights statement at the beginning of the patent application and any issued patents.
- Specify the contract under which the invention was made.
- Identify the Federal agency that awarded the contract.
- Acknowledge that the government has certain rights in the invention.
These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.
Failing to include the Government License Rights statement in a patent application can have serious consequences. While the MPEP 310 does not explicitly state the penalties, the requirement is mandated by law under 35 U.S.C. 202(c)(6). Potential consequences may include:
- Non-compliance with federal regulations
- Risk of the patent being unenforceable
- Potential loss of rights or benefits under the government contract
- Complications in future licensing or commercialization efforts
It’s crucial for inventors and patent attorneys to ensure proper inclusion of this statement to maintain the validity and enforceability of the patent.
For more information on patent enforcement, visit: patent enforcement.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
What are ‘march-in rights’ in government-funded inventions?
‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP states:
‘March-in rights permit the Government, in specified circumstances, to require the contractor or successors in title to the patent to grant a nonexclusive, partially exclusive, or exclusive license to a responsible applicant or applicants.’
These circumstances include:
- Failure to take effective steps to achieve practical application of the invention
- Health and safety needs not being reasonably satisfied
- Public use requirements specified by Federal regulations not being met
March-in rights serve as a safeguard to ensure that federally funded inventions benefit the public.
For more information on patent licensing, visit: patent licensing.
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
How does the government’s march-in rights affect contractor-owned inventions?
The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310:
“The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant(s) upon terms that are reasonable under the circumstances, if the contractor fails to take effective steps to achieve practical application of the invention.”
March-in rights allow the government to intervene if:
- The contractor fails to commercialize the invention within a reasonable time.
- Action is necessary to alleviate health or safety needs.
- Action is necessary to meet requirements for public use specified by federal regulations.
- The contractor has breached agreements specified in 35 U.S.C. 204 regarding U.S. manufacture.
These rights ensure that inventions resulting from federally funded research benefit the public, even if the contractor fails to do so effectively.
For more information on contractor-owned inventions, visit: contractor-owned inventions.
For more information on federally sponsored research, visit: federally sponsored research.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
MPEP 310 - Government License Rights to Contractor - Owned Inventions Made Under Federally Sponsored Research and Development (17)
The placement of the government license rights statement in a patent application depends on whether there are references to related applications:
- If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
- If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.
This placement is specified in 37 CFR 1.77(b)(1)-(3).
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The purpose of including the government license rights statement in patent applications is to:
- Acknowledge the government’s support in the development of the invention
- Inform the public and potential licensees of the government’s rights in the invention
- Ensure compliance with federal regulations regarding inventions made with government support
- Facilitate the government’s ability to exercise its rights in the invention if necessary
This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:
‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’
This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.
What is a ‘subject invention’ in the context of government-funded research?
A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C. 201(e) as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.’ This definition is crucial for determining the government’s rights in inventions made during federally sponsored research.
For more information on federal funding, visit: federal funding.
For more information on patent rights, visit: patent rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
What are the government’s rights in inventions made by nonprofit organizations and small businesses?
The government’s rights in inventions made by nonprofit organizations and small businesses under federally sponsored research are specifically addressed in MPEP 310. According to the manual:
“A funding agreement may provide that the government shall have the right to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees.”
Additionally, the government retains:
- A nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world.
- The right to require the contractor to grant licenses to responsible applicants under certain conditions (march-in rights).
- The right to require written agreements from contractors to ensure that inventions are made available for public use on reasonable terms.
These provisions, outlined in 35 U.S.C. 202, balance the interests of small entities, the government, and the public in federally funded inventions.
For more information on federally sponsored research, visit: federally sponsored research.
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:
- Include the government license rights statement at the beginning of the patent application and any issued patents.
- Specify the contract under which the invention was made.
- Identify the Federal agency that awarded the contract.
- Acknowledge that the government has certain rights in the invention.
These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.
Failing to include the Government License Rights statement in a patent application can have serious consequences. While the MPEP 310 does not explicitly state the penalties, the requirement is mandated by law under 35 U.S.C. 202(c)(6). Potential consequences may include:
- Non-compliance with federal regulations
- Risk of the patent being unenforceable
- Potential loss of rights or benefits under the government contract
- Complications in future licensing or commercialization efforts
It’s crucial for inventors and patent attorneys to ensure proper inclusion of this statement to maintain the validity and enforceability of the patent.
For more information on patent enforcement, visit: patent enforcement.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
What are ‘march-in rights’ in government-funded inventions?
‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP states:
‘March-in rights permit the Government, in specified circumstances, to require the contractor or successors in title to the patent to grant a nonexclusive, partially exclusive, or exclusive license to a responsible applicant or applicants.’
These circumstances include:
- Failure to take effective steps to achieve practical application of the invention
- Health and safety needs not being reasonably satisfied
- Public use requirements specified by Federal regulations not being met
March-in rights serve as a safeguard to ensure that federally funded inventions benefit the public.
For more information on patent licensing, visit: patent licensing.
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
How does the government’s march-in rights affect contractor-owned inventions?
The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310:
“The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant(s) upon terms that are reasonable under the circumstances, if the contractor fails to take effective steps to achieve practical application of the invention.”
March-in rights allow the government to intervene if:
- The contractor fails to commercialize the invention within a reasonable time.
- Action is necessary to alleviate health or safety needs.
- Action is necessary to meet requirements for public use specified by federal regulations.
- The contractor has breached agreements specified in 35 U.S.C. 204 regarding U.S. manufacture.
These rights ensure that inventions resulting from federally funded research benefit the public, even if the contractor fails to do so effectively.
For more information on contractor-owned inventions, visit: contractor-owned inventions.
For more information on federally sponsored research, visit: federally sponsored research.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
Patent Law (17)
The placement of the government license rights statement in a patent application depends on whether there are references to related applications:
- If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
- If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.
This placement is specified in 37 CFR 1.77(b)(1)-(3).
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The purpose of including the government license rights statement in patent applications is to:
- Acknowledge the government’s support in the development of the invention
- Inform the public and potential licensees of the government’s rights in the invention
- Ensure compliance with federal regulations regarding inventions made with government support
- Facilitate the government’s ability to exercise its rights in the invention if necessary
This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:
‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’
This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.
What is a ‘subject invention’ in the context of government-funded research?
A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C. 201(e) as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.’ This definition is crucial for determining the government’s rights in inventions made during federally sponsored research.
For more information on federal funding, visit: federal funding.
For more information on patent rights, visit: patent rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
What are the government’s rights in inventions made by nonprofit organizations and small businesses?
The government’s rights in inventions made by nonprofit organizations and small businesses under federally sponsored research are specifically addressed in MPEP 310. According to the manual:
“A funding agreement may provide that the government shall have the right to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees.”
Additionally, the government retains:
- A nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world.
- The right to require the contractor to grant licenses to responsible applicants under certain conditions (march-in rights).
- The right to require written agreements from contractors to ensure that inventions are made available for public use on reasonable terms.
These provisions, outlined in 35 U.S.C. 202, balance the interests of small entities, the government, and the public in federally funded inventions.
For more information on federally sponsored research, visit: federally sponsored research.
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:
- Include the government license rights statement at the beginning of the patent application and any issued patents.
- Specify the contract under which the invention was made.
- Identify the Federal agency that awarded the contract.
- Acknowledge that the government has certain rights in the invention.
These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.
Failing to include the Government License Rights statement in a patent application can have serious consequences. While the MPEP 310 does not explicitly state the penalties, the requirement is mandated by law under 35 U.S.C. 202(c)(6). Potential consequences may include:
- Non-compliance with federal regulations
- Risk of the patent being unenforceable
- Potential loss of rights or benefits under the government contract
- Complications in future licensing or commercialization efforts
It’s crucial for inventors and patent attorneys to ensure proper inclusion of this statement to maintain the validity and enforceability of the patent.
For more information on patent enforcement, visit: patent enforcement.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
What are ‘march-in rights’ in government-funded inventions?
‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP states:
‘March-in rights permit the Government, in specified circumstances, to require the contractor or successors in title to the patent to grant a nonexclusive, partially exclusive, or exclusive license to a responsible applicant or applicants.’
These circumstances include:
- Failure to take effective steps to achieve practical application of the invention
- Health and safety needs not being reasonably satisfied
- Public use requirements specified by Federal regulations not being met
March-in rights serve as a safeguard to ensure that federally funded inventions benefit the public.
For more information on patent licensing, visit: patent licensing.
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
How does the government’s march-in rights affect contractor-owned inventions?
The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310:
“The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant(s) upon terms that are reasonable under the circumstances, if the contractor fails to take effective steps to achieve practical application of the invention.”
March-in rights allow the government to intervene if:
- The contractor fails to commercialize the invention within a reasonable time.
- Action is necessary to alleviate health or safety needs.
- Action is necessary to meet requirements for public use specified by federal regulations.
- The contractor has breached agreements specified in 35 U.S.C. 204 regarding U.S. manufacture.
These rights ensure that inventions resulting from federally funded research benefit the public, even if the contractor fails to do so effectively.
For more information on contractor-owned inventions, visit: contractor-owned inventions.
For more information on federally sponsored research, visit: federally sponsored research.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.
Patent Procedure (17)
The placement of the government license rights statement in a patent application depends on whether there are references to related applications:
- If there are references to related applications in the first sentence(s) of the specification following the title, the government license rights statement should appear as the second paragraph of the specification.
- If there are no references to related applications, the government license rights statement should appear as the first paragraph of the specification.
This placement is specified in 37 CFR 1.77(b)(1)-(3).
For inventions made with government support, contractors must include a specific statement at the beginning of the patent application and any resulting patents. This requirement is mandated by 35 U.S.C. 202(c)(6). The statement should read:
“This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.”
This statement ensures transparency regarding government involvement and rights in the invention.
For more information on invention disclosure, visit: invention disclosure.
For more information on patent applications, visit: patent applications.
The purpose of including the government license rights statement in patent applications is to:
- Acknowledge the government’s support in the development of the invention
- Inform the public and potential licensees of the government’s rights in the invention
- Ensure compliance with federal regulations regarding inventions made with government support
- Facilitate the government’s ability to exercise its rights in the invention if necessary
This requirement, mandated by 35 U.S.C. 202(c)(6), helps maintain transparency in federally funded research and development while protecting the government’s interests in the resulting inventions.
The government license rights statement required for contractor-owned inventions made under federally sponsored research and development is:
‘This invention was made with government support under (identify the contract) awarded by (identify the Federal agency). The government has certain rights in the invention.’
This statement is mandated by 35 U.S.C. 202(c)(6) and must be included at the beginning of the patent application and any issued patents.
What is a ‘subject invention’ in the context of government-funded research?
A ‘subject invention’ is a term used in government contracts and refers to any invention conceived or first actually reduced to practice in the performance of work under a government contract. According to MPEP 310, ‘The term ‘subject invention’ is defined by 35 U.S.C. 201(e) as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.’ This definition is crucial for determining the government’s rights in inventions made during federally sponsored research.
For more information on federal funding, visit: federal funding.
For more information on patent rights, visit: patent rights.
What are the reporting requirements for subject inventions under government contracts?
Contractors working on federally sponsored research and development projects have specific reporting requirements for subject inventions. According to MPEP 310:
“The contractor is required to disclose each subject invention to the Federal agency within two months after the inventor discloses it in writing to contractor personnel responsible for patent matters.”
Additionally, the contractor must:
- Elect in writing whether or not to retain title to any subject invention within two years of disclosure.
- File patent applications within one year after election (or prior to any statutory bar date).
- Execute and promptly deliver instruments to confirm government rights.
- Provide periodic reports on the utilization of the invention.
These requirements ensure proper documentation and protection of both the contractor’s and the government’s interests in inventions resulting from federally funded research.
For more information on federally sponsored research, visit: federally sponsored research.
Contractors have specific reporting requirements under the Bayh-Dole Act:
- Disclose each subject invention to the Federal agency within 2 months after the inventor discloses it in writing to contractor personnel responsible for patent matters.
- Elect in writing whether or not to retain title to any subject invention by notifying the Federal agency within 2 years of disclosure.
- File patent applications within statutory deadlines.
- Include a government support clause in patent applications.
The MPEP states: ‘The contractor is also required to submit periodic reports on the utilization of a subject invention or on efforts at obtaining such utilization that are being made by the contractor or its licensees or assignees.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
What are the government’s rights in inventions made by nonprofit organizations and small businesses?
The government’s rights in inventions made by nonprofit organizations and small businesses under federally sponsored research are specifically addressed in MPEP 310. According to the manual:
“A funding agreement may provide that the government shall have the right to require periodic reporting on the utilization or efforts at obtaining utilization that are being made by the contractor or his licensees or assignees.”
Additionally, the government retains:
- A nonexclusive, nontransferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world.
- The right to require the contractor to grant licenses to responsible applicants under certain conditions (march-in rights).
- The right to require written agreements from contractors to ensure that inventions are made available for public use on reasonable terms.
These provisions, outlined in 35 U.S.C. 202, balance the interests of small entities, the government, and the public in federally funded inventions.
For more information on federally sponsored research, visit: federally sponsored research.
According to MPEP 310, a Government contractor who retains U.S. domestic patent rights has the following obligations:
- Include the government license rights statement at the beginning of the patent application and any issued patents.
- Specify the contract under which the invention was made.
- Identify the Federal agency that awarded the contract.
- Acknowledge that the government has certain rights in the invention.
These obligations stem from 35 U.S.C. 202(c)(6), which mandates the inclusion of this information in the patent application and any resulting patents.
Failing to include the Government License Rights statement in a patent application can have serious consequences. While the MPEP 310 does not explicitly state the penalties, the requirement is mandated by law under 35 U.S.C. 202(c)(6). Potential consequences may include:
- Non-compliance with federal regulations
- Risk of the patent being unenforceable
- Potential loss of rights or benefits under the government contract
- Complications in future licensing or commercialization efforts
It’s crucial for inventors and patent attorneys to ensure proper inclusion of this statement to maintain the validity and enforceability of the patent.
For more information on patent enforcement, visit: patent enforcement.
March-in rights are a provision of the Bayh-Dole Act that allow the government to intervene in certain circumstances:
- The government can require the contractor or exclusive licensee to grant a license to a responsible applicant.
- If the contractor or licensee refuses, the government can grant the license itself.
- These rights are exercised only in specific situations, such as when the contractor is not taking effective steps to achieve practical application of the invention.
The MPEP explains: ‘March-in rights allow the government to grant licenses to other parties… where the contractor has failed to take effective steps to achieve practical application of the invention.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
For more information on patent licensing, visit: patent licensing.
What are ‘march-in rights’ in government-funded inventions?
‘March-in rights’ are a significant aspect of government rights in federally funded inventions. As described in MPEP 310, these rights allow the government to require the contractor, assignee, or exclusive licensee of a subject invention to grant a license to a responsible applicant under certain circumstances. The MPEP states:
‘March-in rights permit the Government, in specified circumstances, to require the contractor or successors in title to the patent to grant a nonexclusive, partially exclusive, or exclusive license to a responsible applicant or applicants.’
These circumstances include:
- Failure to take effective steps to achieve practical application of the invention
- Health and safety needs not being reasonably satisfied
- Public use requirements specified by Federal regulations not being met
March-in rights serve as a safeguard to ensure that federally funded inventions benefit the public.
For more information on patent licensing, visit: patent licensing.
No, including government support information on a provisional application cover sheet is not sufficient to meet the requirements of 35 U.S.C. 202(c)(6). The MPEP states:
Providing information concerning government support on a provisional application cover sheet does not satisfy the requirement of 35 U.S.C. 202(c)(6) which requires that the a statement be included within the specification of such application and any patent issuing thereon specifying that the invention was made with Government support and that the Government has certain rights in the invention.
The government license rights statement must be included within the specification itself, not just on the cover sheet.
How does the government’s march-in rights affect contractor-owned inventions?
The government’s march-in rights are a significant aspect of federally sponsored research and development contracts. As outlined in MPEP 310:
“The government has the right to require the contractor to grant a nonexclusive, partially exclusive, or exclusive license in any field of use to a responsible applicant(s) upon terms that are reasonable under the circumstances, if the contractor fails to take effective steps to achieve practical application of the invention.”
March-in rights allow the government to intervene if:
- The contractor fails to commercialize the invention within a reasonable time.
- Action is necessary to alleviate health or safety needs.
- Action is necessary to meet requirements for public use specified by federal regulations.
- The contractor has breached agreements specified in 35 U.S.C. 204 regarding U.S. manufacture.
These rights ensure that inventions resulting from federally funded research benefit the public, even if the contractor fails to do so effectively.
For more information on contractor-owned inventions, visit: contractor-owned inventions.
For more information on federally sponsored research, visit: federally sponsored research.
The Government License Rights statement, as required by 35 U.S.C. 202(c)(6) and described in MPEP 310, does not transfer ownership of the patent to the government. Instead, it acknowledges that:
“The government has certain rights in the invention.”
These rights typically include:
- A non-exclusive, non-transferable, irrevocable, paid-up license to practice or have practiced the invention for or on behalf of the United States throughout the world
- March-in rights, allowing the government to require the contractor to grant licenses to third parties under certain circumstances
- The right to receive periodic reports on the utilization of the invention
While the contractor retains ownership and the right to commercialize the invention, they must operate within the framework of these government rights.
The Bayh-Dole Act, as implemented in 37 CFR Part 401, significantly affects government rights in federally funded inventions:
- It allows contractors (including small businesses and nonprofit organizations) to retain title to inventions made under federally funded research and development contracts.
- The government receives a nonexclusive, nontransferable, irrevocable, paid-up license to practice the invention.
- The Act encourages the commercialization of federally funded inventions while protecting the government’s interests.
As stated in the MPEP: ‘The Bayh-Dole Act… provides, in essence, that nonprofit organizations and small business firms may retain title to inventions made under federally funded research and development contracts.’
For more information on Bayh-Dole Act, visit: Bayh-Dole Act.
MPEP 310 is closely related to the Bayh-Dole Act, officially known as the Patent and Trademark Law Amendments Act. Here’s how they are connected:
- The Bayh-Dole Act allows contractors to retain title to inventions made with federal funding.
- It requires contractors to disclose these inventions and include a statement in patent applications about government support.
- MPEP 310 provides specific guidance on implementing the Bayh-Dole Act’s requirements, particularly the government license rights statement.
- The statutory basis for MPEP 310 is 35 U.S.C. 202(c)(6), which is part of the Bayh-Dole Act.
In essence, MPEP 310 serves as a practical guide for patent applicants to comply with the Bayh-Dole Act’s provisions regarding government-funded inventions.