(More on compulsory licensing here.)
This is a non-exhaustive set of provisions in US statutes that are used to for non-voluntary use of patented inventions.
28 U.S.C. 1498 – Patent and copyright cases
(a) Whenever an invention described in and covered by a patent of the United States is used or manufactured by or for the United States without license of the owner thereof or lawful right to use or manufacture the same, the owner’s remedy shall be by action against the United States in the United States Court of Federal Claims for the recovery of his reasonable and entire compensation for such use and manufacture. . . .
For the purposes of this section, the use or manufacture of an invention described in and covered by a patent of the United States by a contractor, a subcontractor, or any person, firm, or corporation for the Government and with the authorization or consent of the Government, shall be construed as use or manufacture for the United States. . . .
One relevant regulation that is often used or included by reference on contracts to implement 28 USC 1948 is FAR 52.227-1, which reads in part:
52.227-1 Authorization and Consent.
As prescribed in 27.201-2(a)(1), insert the following clause:
Authorization and Consent (Jun 2020)(a) The Government authorizes and consents to all use and manufacture, in performing this contract or any subcontract at any tier, of any invention described in and covered by a United States patent-
. . .
The Bayh-Dole Act
The Bayh-Dole includes 13 sections, 35 USC 200 to 212. Among the important sections regarding non-voluntary use of patented inventions are Section 203 on March-in rights, which needs to be read with the definitions of practical application and subject inventions in Section 201, and the Policy and Objective in section 200. Section 202 and 209 both concern the terms and conditions on patent licenses, on such topics as the federal government global royalty free right to used subject inventions, and the ability of the federal government to include additional or different terms in exceptional circumstances or “for meeting the obligations of the United States under any treaty, international agreement, arrangement of cooperation, memorandum of understanding, or similar arrangement.” Section 204 deals with preference for US industry and local manufacturing obligations.
CHAPTER 18—PATENT RIGHTS IN INVENTIONS MADE WITH FEDERAL ASSISTANCE
Sec.200.Policy and objective.
201.Definitions.
202.Disposition of rights.
203.March-in rights.
204.Preference for United States industry.
205.Confidentiality.
206.Uniform clauses and regulations.
207.Domestic and foreign protection of federally owned inventions.
208.Regulations governing Federal licensing.
209.Licensing federally owned inventions.
210.Precedence of chapter.
211.Relationship to antitrust laws.
212.Disposition of rights in educational awards.
42 USC Sec 2183 – Nonmilitary utilization (patents on atomic energy)
https://www.govinfo.gov/app/details/USCODE-2022-title42/USCODE-2022-title42-chap23-divsnA-subchapXII-sec2183
See also:
- Sec. 2181 – Inventions relating to atomic weapons, and filing of reports
- Sec. 2182 – Inventions conceived during Commission contracts; ownership; waiver; hearings
- Sec. 2183 – Nonmilitary utilization
- Sec. 2184 – Injunctions; measure of damages
- Sec. 2185 – Prior art
- Sec. 2186 – Commission patent licenses
- Sec. 2187 – Compensation, awards, and royalties
- Sec. 2188 – Monopolistic use of patents
- Sec. 2189 – Federally financed research
- Sec. 2190 – Saving clause for prior patent applications
§2183. Nonmilitary utilization
(a) Declaration of public interest
The Commission may, after giving the patent owner an opportunity for a hearing, declare any patent to be affected with the public interest if (1) the invention or discovery covered by the patent is of primary importance in the production or utilization of special nuclear material or atomic energy; and (2) the licensing of such invention or discovery under this section is of primary importance to effectuate the policies and purposes of this chapter.(b) Action by Commission
Whenever any patent has been declared affected with the public interest, pursuant to subsection (a)—(1) the Commission is licensed to use the invention or discovery covered by such patent in performing any of its powers under this chapter; and
(2) any person may apply to the Commission for a nonexclusive patent license to use the invention or discovery covered by such patent, and the Commission shall grant such patent license to the extent that it finds that the use of the invention or discovery is of primary importance to the conduct of an activity by such person authorized under this chapter.
§2188. Monopolistic use of patents
Whenever the owner of any patent hereafter granted for any invention or discovery of primary use in the utilization or production of special nuclear material or atomic energy is found by a court of competent jurisdiction to have intentionally used such patent in a manner so as to violate any of the antitrust laws specified in section 2135(a) of this title, there may be included in the judgment of the court, in its discretion and in addition to any other lawful sanctions, a requirement that such owner license such patent to any other licensee of the Commission who demonstrates a need therefor. If the court, at its discretion, deems that such licensee shall pay a reasonable royalty to the owner of the patent, the reasonable royalty shall be determined in accordance with section 2187 of this title.
(Aug. 1, 1946, ch. 724, title I, §158, as added Aug. 30, 1954, ch. 1073, §1, 68 Stat. 947; amended Pub. L. 87–206, §12, Sept. 6, 1961, 75 Stat. 478; renumbered title I, Pub. L. 102–486, title IX, §902(a)(8), Oct. 24, 1992, 106 Stat. 2944.)
42 U.S.C. 7608 – MANDATORY LICENSING
http://www.gpo.gov/fdsys/granule/USCODE-2011-title42/USCODE-2011-title42-chap85-subchapIII-sec7608
This involves standards for the Clean Air Act.
§7608. Mandatory licensing
Whenever the Attorney General determines, upon application of the Administrator—
(1) that—
(A) in the implementation of the requirements of section 7411, 7412, or 7521 of this title, a right under any United States letters patent, which is being used or intended for public or commercial use and not otherwise reasonably available, is necessary to enable any person required to comply with such limitation to so comply, and
(B) there are no reasonable alternative methods to accomplish such purpose, and(2) that the unavailability of such right may result in a substantial lessening of competition or tendency to create a monopoly in any line of commerce in any section of the country,
the Attorney General may so certify to a district court of the United States, which may issue an order requiring the person who owns such patent to license it on such reasonable terms and conditions as the court, after hearing, may determine. Such certification may be made to the district court for the district in which the person owning the patent resides, does business, or is found.
42 U.S.C. 16192 – NEXT GENERATION LIGHTING INITIATIVE
http://www.gpo.gov/fdsys/granule/USCODE-2010-title42/USCODE-2010-title42-chap149-subchapIX-partA-sec16192
(h) Intellectual property
The Secretary may require (in accordance with section 202(a)(ii) of title 35, section 2182 of this title, and section 5908 of this title) that for any new invention developed under subsection (e)—
(1) that the Industry Alliance participants who are active participants in research, development, and demonstration activities related to the advanced solid-state lighting technologies that are covered by this section shall be granted the first option to negotiate with the invention owner, at least in the field of solid-state lighting, nonexclusive licenses and royalties on terms that are reasonable under the circumstances;
(2)(A) that, for 1 year after a United States patent is issued for the invention, the patent holder shall not negotiate any license or royalty with any entity that is not a participant in the Industry Alliance described in paragraph (1); and
(B) that, during the year described in subparagraph (A), the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested participant in the Industry Alliance described in paragraph (1); and
(3) such other terms as the Secretary determines are required to promote accelerated commercialization of inventions made under the Initiative.
42 U.S.C. 17231 – ENERGY STORAGE COMPETITIVENESS
http://www.gpo.gov/fdsys/granule/USCODE-2011-title42/USCODE-2011-title42-chap152-subchapV-partD-sec17231
(h) (7) Intellectual property
In accordance with section 202(a)(ii) of title 35, section 2182 of this title, and section 5908 of this title, the Secretary may require, for any new invention developed under this subsection, that—
(A) if an industrial participant is active in a 1 energy storage research center established under this subsection relating to the advancement of energy storage technologies carried out, in whole or in part, with Federal funding, the industrial participant be granted the first option to negotiate with the invention owner, at least in the field of energy storage technologies, nonexclusive licenses, and royalties on terms that are reasonable, as determined by the Secretary;
(B) if 1 or more industry participants are active in a center, during a 2-year period beginning on the date on which an invention is made—
(i) the patent holder shall not negotiate any license or royalty agreement with any entity that is not an industrial participant under this subsection; and
(ii) the patent holder shall negotiate nonexclusive licenses and royalties in good faith with any interested industrial participant under this subsection; and(C) the new invention be developed under such other terms as the Secretary determines to be necessary to promote the accelerated commercialization of inventions made under this subsection to advance the capability of the United States to successfully compete in global energy storage markets.
30 U.S.C. 937 – CONTRACTS AND GRANTS (Black Lung disease)
http://www.gpo.gov/fdsys/granule/USCODE-1997-title30/USCODE-1997-title30-chap22-subchapIV-partC-sec937
Context: Title 30 – MINERAL LANDS AND MINING, CHAPTER 22 – MINE SAFETY AND HEALTH, SUBCHAPTER IV – BLACK LUNG BENEFITS, Sec. 937 – Contracts and grants
Any grant made pursuant to this subsection shall be conditioned upon all information, uses, products, processes, patents, and other developments resulting from such research being available to the general public, except to the extent of such exceptions and limitations as the Secretary of Health and Human Services may deem necessary in the public interest.
35 U.S.C. 271 – INFRINGEMENT OF PATENT
http://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-title35-partIII-chap28-sec271
Context: The Affordable Care Act created a limitation on remedies for infringement of patent when a company selling a biologic drug failed to provide timely disclosure of patents to potential suppliers of biosimilar products.
35 USC 271 (e)(6)(B) In an action for infringement of a patent described in subparagraph (A), the sole and exclusive remedy that may be granted by a court, upon a finding that the making, using, offering to sell, selling, or importation into the United States of the biological product that is the subject of the action infringed the patent, shall be a reasonable royalty.
35 U.S.C. 283 – INJUNCTION
http://www.gpo.gov/fdsys/granule/USCODE-2011-title35/USCODE-2011-title35-partIII-chap29-sec283
Today, most US compulsory licenses are those involving injunction proceedings, or more concretely, when a judge withholds an injunction and allows infringement, subject to a court ordered royalty. This case have accelerated following the 2006 decision in eBay v MercExchange.
https://www.supremecourt.gov/search.aspx?FileName=/docketfiles/05-130.htm
SUPREME COURT OF THE UNITED STATES
EBAY INC. ET AL. v. MERCEXCHANGE, L. L. C.
Argued March 29, 2006—Decided May 15, 2006Held: The traditional four-factor test applied by courts of equity when considering whether to award permanent injunctive relief to a prevailing plaintiff applies to disputes arising under the Patent Act. That test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury; (3) that considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. The decision to grant or deny such relief is an act of equitable discretion by the district court, reviewable on appeal for abuse of discretion. These principles apply with equal force to Patent Act disputes
19 U.S.C. 1337 – UNFAIR PRACTICES IN IMPORT TRADE
http://www.gpo.gov/fdsys/granule/USCODE-2011-title19/USCODE-2011-title19-chap4-subtitleII-partII-sec1337/content-detail.html
unless, after considering the effect of such exclusion or order upon the public health and welfare, competitive conditions in the United States economy, the production of like or directly competitive articles in the United States, and United States consumers, the Commission finds that such exclusion or order should not be issued.
See, for example, this August 3, 2013 letter from Ambassador Michael Froman (PDF here), in a dispute involving patents held by Samsung, infringed by Apple.
Antitrust law
This is a complex area, as regards statutes.
See, for starters, the US DOJ Antitrust Division Manual, Fifth Edition, April 2015 Chapter II. Statutory Provisions and Guidelines of the Antitrust Division, U.S. Department of Justice, Antitrust Division Page II-1, Chapter II. Statutory Provisions and Guidelines of the Antitrust Division.
I’ll add a few more cites on this later.
15 U.S.C. 45 – UNFAIR METHODS OF COMPETITION UNLAWFUL; PREVENTION BY COMMISSION
http://www.gpo.gov/fdsys/granule/USCODE-2011-title15/USCODE-2011-title15-chap2-subchapI-sec45
Context: Title 15 – COMMERCE AND TRADE, CHAPTER 2 – FEDERAL TRADE COMMISSION; PROMOTION OF EXPORT TRADE AND PREVENTION OF UNFAIR METHODS OF COMPETITION, SUBCHAPTER I – FEDERAL TRADE COMMISSION, Sec. 45 – Unfair methods of competition unlawful; prevention by Commission
(a) (1) Unfair methods of competition in or affecting commerce, and unfair or deceptive acts or practices in or affecting commerce, are hereby declared unlawful.
Sherman Antitrust Act, 15 USC 1-7
15 U.S. Code § 1 – Trusts, etc., in restraint of trade illegal; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec1
Every contract, combination in the form of trust or otherwise, or conspiracy, in restraint of trade or commerce among the several States, or with foreign nations, is declared to be illegal. Every person who shall make any contract or engage in any combination or conspiracy hereby declared to be illegal shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000, or by imprisonment not exceeding 10 years, or by both said punishments, in the discretion of the court.15 U.S. Code § 2 – Monopolizing trade a felony; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec2
Every person who shall monopolize, or attempt to monopolize, or combine or conspire with any other person or persons, to monopolize any part of the trade or commerce among the several States, or with foreign nations, shall be deemed guilty of a felony, and, on conviction thereof, shall be punished by fine not exceeding $100,000,000 if a corporation, or, if any other person, $1,000,000, or by imprisonment not exceeding 10 years, or by both said punishments, in the discretion of the court.
Wilson Tariff Act, 15 USC 8-11
15 U.S. Code § 8 – Trusts in restraint of import trade illegal; penalty
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec8
Every combination, conspiracy, trust, agreement, or contract is declared to be contrary to public policy, illegal, and void when the same is made by or between two or more persons or corporations, either of whom, as agent or principal, is engaged in importing any article from any foreign country into the United States, and when such combination, conspiracy, trust, agreement, or contract is intended to operate in restraint of lawful trade, or free competition in lawful trade or commerce, or to increase the market price in any part of the United States of any article or articles imported or intended to be imported into the United States, or of any manufacture into which such imported article enters or is intended to enter. Every person who shall be engaged in the importation of goods or any commodity from any foreign country in violation of this section, or who shall combine or conspire with another to violate the same, is guilty of a misdemeanor, and on conviction thereof in any court of the United States such person shall be fined in a sum not less than $100 and not exceeding $5,000, and shall be further punished by imprisonment, in the discretion of the court, for a term not less than three months nor exceeding twelve months.
Clayton Act, 15 USC 12-27
15 U.S.C. 12 – DEFINITIONS; SHORT TITLE
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec12§12. Definitions; short title
(a)“Antitrust laws,” as used herein, includes the Act entitled “An Act to protect trade and commerce against unlawful restraints and monopolies,” approved July second, eighteen hundred and ninety [the Sherman Antitrust act]; sections seventy-three to seventy-six, inclusive, of an Act entitled “An Act to reduce taxation, to provide revenue for the Government, and for other purposes,” of August twenty-seventh, eighteen hundred and ninety-four [ the Wilson Tariff Act]; an Act entitled “An Act to amend sections seventy-three and seventy-six of the Act of August twenty-seventh, eighteen hundred and ninety-four, entitled ‘An Act to reduce taxation, to provide revenue for the Government, and for other purposes,’ ” approved February twelfth, nineteen hundred and thirteen [; and also this Act.
“Commerce,” as used herein, means trade or commerce among the several States and with foreign nations, or between the District of Columbia or any Territory of the United States and any State, Territory, or foreign nation, or between any insular possessions or other places under the jurisdiction of the United States, or between any such possession or place and any State or Territory of the United States or the District of Columbia or any foreign nation, or within the District of Columbia or any Territory or any insular possession or other place under the jurisdiction of the United States: Provided, That nothing in this Act contained shall apply to the Philippine Islands.
The word “person” or “persons” wherever used in this Act shall be deemed to include corporations and associations existing under or authorized by the laws of either the United States, the laws of any of the Territories, the laws of any State, or the laws of any foreign country.
(b) This Act may be cited as the “Clayton Act”.
15 U.S. Code § 13 – Discrimination in price, services, or facilities
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec1315 U.S. Code § 18 – Acquisition by one corporation of stock of another
http://www.gpo.gov/fdsys/granule/USCODE-2012-title15/USCODE-2012-title15-chap1-sec18
No person engaged in commerce or in any activity affecting commerce shall acquire, directly or indirectly, the whole or any part of the stock or other share capital and no person subject to the jurisdiction of the Federal Trade Commission shall acquire the whole or any part of the assets of another person engaged also in commerce or in any activity affecting commerce, where in any line of commerce or in any activity affecting commerce in any section of the country, the effect of such acquisition may be substantially to lessen competition, or to tend to create a monopoly. . . .