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Bayh-Dole Patent Ownership Dispute to be heard by Supreme Court

November 08, 2010
Post by Blog Staff

Last week, the Supreme Court announced it will review the Federal Circuit decision in Stanford v. Roche, addressing patent ownership under the Bayh-Dole Act, after granting Stanford's petition for a writ of certiorari. The Court will decide an interesting patent ownership dispute involving the contractual obligation of a University inventor to assign rights to the University and the same inventor's prior assignment of future rights to a company (which eventually became Roche). The Federal Circuit ruled against Stanford, finding that the prior assignment of the inventor trumped the assignment obligation he later had with the University.

Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party.
More on Bd. of Trustees of Leland Stanford Jr. Univ. v. Roche Molecular Sys., after the jump.

The patents at issue relate to methods for using PCR to measure HIV concentration in blood plasma. The Stanford scientists listed as inventors of the patent had a contractual obligation to assign the invention to the University. However, prior to the invention of the patent at issue, one inventor assigned his rights to future inventions to a company (the predecessor in interest to Roche). There is a distinction between the two "assignment obligations," namely the inventor promised-to-assign rights to Stanford as compared to the actual assignment of rights he entered into with a third party (Roche).

The dispute arose after Stanford filed the patent application, obtained a patent, and thereafter sought to enforce the patent and obtain a royalty from Roche. The Federal Circuit held in favor of Roche, finding that Roche was not liable for patent infringement since it had ownership rights to the patent as a result of the inventor's assignment.
Stanford's appeal to the Supreme Court argues the Bayh-Dole Act (35 U.S.C. §§ 200-212), pursuant to the University's receipt of certain federal funding for research resulting in the patent, trumps the inventor's assignment to Roche. The question granted certiorari is whether a federal contractor university's statutory right (under the Act) in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party. Notably, the question presented on behalf of Stanford does not focus upon the contractual obligation an inventor has with a University. The question is simply whether federal funding trumps any obligation by an inventor to a third party.

The government's interest in the dispute, as evidenced by the Department of Justice amicus brief filed in support of Stanford, suggests that when the government provides federal funding for university research, that ownership does not initially vest in the inventor of a patent. The government asserts that such federally funded inventions result in the university or federal contractor automatically receiving ownership (or title) to the invention. A Supreme Court ruling in favor of Stanford seeks to preclude inventors from contractually assigning rights in any invention to a third party (so long as federal funds were received).

The case was granted for hearing this term. However, because certiorari was only granted last week, merits briefs have not yet been filed. So, the case will likely not be argued until late in the term, likely March or April.

For the decision of the Federal Circuit on review, click here .

For a collection of the certiorari-stage documents, click here.

For the Supreme Court's docket page for the case, click here.


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