~Iri,n - Bayhdolecentral

Scott O. Locke, JO, and Eric W Guttag, JO I 45
knowledge, the federal government has never exercised its march-in
rights. See Marie Thursby, Jerry Thursby, aud Errunauuel Decheuaux
"Shirking, Shelving aud Sharing Risk: The Role of University Liceuse
Contracts" (2004),4, www.tiger.gatech.edulfiles/gCtigecshirkiug.pdf.
("The fact that the federal government has never exercised its marchiu
rights under the Bayh-Dole Act has contributed to the view that
perhaps these rights should be strengthened.")
12. There are numerous other provisions under which the federal government
cau acquire tide to an inveutiou. See, e.g., 42 U.S.C. § 5908.
However, Congress was careful to specify that, with respect to nonprofit
organizations (e.g., universities) and small businesses, the provisions of
the Bayh-Dole Act take precedeuce. See 35 U.S.C. § 210.
13. 35 U.S.C. §§ 202(c)(1) & 202(c)(2); 37 C.F.R. § 401.14 (c)(l) &
(c)(2); 37 C.F.R. § 401.14 (d). It is within the funding agency's discretion
whether or not to receive tide. See 37 C.F.R. § 401.14 (d).
14. See text discussion at footnotes 26-27 infra.
15.48 C.F.R. § 52.227-11, also referred to as Federal Acquisition
Regulation (FAR) 52.227-11.
16.48 C.F.R. § 252.227-7039 (FAR 252.227-7039).
17. The first two interim reports were apparently prompted by a reminder
from the Army.
18. August 1997 eventually became the key date/time period iu establishing
when the subject invention was in existence so that it should be disclosed
to the Army. See text discussiou at footuote 21 infra.
19. In re Campbell Plastics Engineering & Mfg., Inc., 2003 WL 15183134
(A.S.B.C.A. March 18, 2003).
20. 35 U.S.C. § 202(c)(1).
21. Interestingly, au exact date or period for when the subject iuveution first
existed (i.e., was first conceived or reduced to practice) was never determined
by the Board or by the Federal Circuit, except by inference. For
example, iu support of its inventorship claim, the Army argued to the
Board that the subject invention was in existence at least as early as
June 1997, i.e., based on the Juue 1997 report. The Federal Circuit
indirectly refers to the subject inveutiou as existing at least by August
1997, i.e., when the contractor disclosed the sonic welding method of
the 1.537 patent to its patent counsel. In practice, contractors need to