John DeStefano

Under typical Phase 1 contracts with the Department of Defense (DoD), such as the Air Force Research Lab (AFRL), default ownership of domestic and international intellectual property rights belong to the Contractor. However, if the Contractor fails to report any inventions to the contracting officer within two months of preparing the corresponding patent applications, the Contractor risks losing ownership of those inventions.

Funding agencies have taken a very narrow approach when interpreting the four categories listed above from 35 U.S.C. § 203. Accordingly, contractors should understand how march-in rights function in theory, but it is historically unlikely to assume an agency would exercise this power without further legislation. Ultimately, contractors should focus on furthering their research and ensuring proper disclosure practices to their funding agencies, as it is historically unlikely that a funding agency will exercise their march-in rights and compel contractors to license any of their subject inventions.