Lutnick Warns Harvard of Plan to March In on Patents

U.S. Secretary of Commerce Howard Lutnick on Friday, August 8, sent a letter to Harvard University President Alan Garber informing him that the U.S. government is planning to “march in” on its patents.

Lutnick accused the institution of failing “to live up to its obligations to the American taxpayer” and being “in breach of the statutory, regulatory, and contractual requirements tied to Harvard’s federally funded research programs and intellectual property arising therefrom, including patents.” As a result, the Commerce Department will be “initiating an immediate comprehensive review of the compliance—or lack thereof—of Harvard’s federally funded research programs,” wrote Lutnick.

For decades, the patent community has cautioned government against marching in on patents under the Bayh-Dole Act. While Bayh-Dole contemplates march-in rights, the law strictly limits the situations in which such rights can be exercised. March-in requests have been rejected on a bipartisan basis multiple times since the bill became law.

In December 2023, the National Institute of Standards & Technology (NIST) and the Department of Commerce published a draft version of a Federal Register Notice seeking comments on a proposed framework for deciding whether and when to exercise march-in rights under the Bayh-Dole Act that would have significantly broadened the criteria for compulsory licensing of patented technology developed with federal funding.

The U.S. Chamber of Commerce published a blog post in September 2024 urging the Biden Administration to change course on the since-failed policy proposal, arguing it would threaten U.S. dominance in quantum computing. And the Bayh-Dole Coalition’s Executive Director, Joseph Allen, who formerly served as the Senate Judiciary Committee staffer to Senator Birch Bayh (D-IN), explained that “the framework would irreparably undermine one of the most successful laws in American history.” That proposal was never finalized but was never officially rescinded either.

Lutnick told Garber in Friday’s letter that the government will initiate the march-in process by granting third-party licenses to Harvard’s patents or taking title over where it finds Harvard has failed to comply with the Act. Specifically, Commerce will be initiating actions to investigate:

• “Failures to comply with the requirements for timely disclosure and election of title under 35 U.S.C. § 202(c)(1) and 37 C.F.R § 401.14(d)(1)(i);
• Failures to comply with the preference for United States industry as required by 35 U.S.C. 204 and 37 C.F.R 401.14(i); and
• Failures to take effective steps to achieve practical application of subject inventions as required by 35 U.S.C. § 203(a)(1) and 37 C.F.R § 401.14(j)(1).”

The letter further directed Harvard to “provide a comprehensive list of all patents it has received stemming from federally funded research grants and provide information sufficient to prove its compliance with the Bayh-Dole Act, its associated regulations, and our contractual agreements.”

In his X post publishing the letter, Lutnick said: “Taxpayers deserve the benefit of the bargain. If Harvard won’t honor the Bayh-Dole Act, then we will find someone who will.”

The Administration’s move is arguably political. Trump has been targeting Harvard over various allegations, including that it violated Title VI of the Civil Rights Act by refusing to address antisemitism on campus. The Administration froze all federal funding to the university in April and Harvard is currently suing Trump over the funding freeze.

In response to Lutnick’s letter, the Bayh-Dole Coalition issued a statement cautioning the Commerce Department to carefully consider any decision to march in. The Coalition said:

“The Bayh-Dole Act has improved and saved millions of lives while helping make the United States the world’s innovation leader. For more than 45 years, it has succeeded because it has been applied consistently and faithfully, giving government, universities, and the private sector the confidence to work together to turn federally funded research into real-world solutions. While the government has a duty to ensure compliance, that oversight must be grounded in the law’s requirements and applied evenly to preserve trust in the system.”

The Council for Innovation Promotion (C4IP) also criticized the plan:

“We are deeply troubled by the Commerce Department’s letter to Harvard University stating that the Department is ‘initiating the ‘march-in’ process under the Bayh-Dole Act’ to grant licenses or take title to Harvard’s patents. The Bayh-Dole Act exists to move federally funded discoveries from university labs into the marketplace — most often through startups and other entrepreneurial ventures — where they become new products, create jobs, and strengthen the economy. By casting doubt on the security of university patents, even for a single institution, this effort injects uncertainty into the market, discourages investment, and punishes the entrepreneurs who take the risks needed to bring innovations to life.”

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