Saturday, October 10, 2009

Stanford Daily covering Roche case suggests Stanford is reviewing patent assignment policies

In a piece on 8 Oct 09 [ University loses four-year patent lawsuit ], the Stanford Daily covered Stanford University's big loss in the Roche case. Several parts were of interest.

-->The beginning of the story, which reads: Stanford students concerned about failure can take comfort in the fact that their school can fall short as well.

-->The middle of the story, which suggests the writer does not know much about the Bayh-Dole Act:

The Federal Circuit Court likewise rejected Stanford’s argument under the Bayh-Dohl [sic]Act, which encouraged the utilization of government-funded research conducted by universities. Citing the law, the University’s law team pointed to a tenet that suggested that any government-funded research at a university gave that university a “right of second refusal” at a patent patent [sic].

The court found this argument irrelevant to the facts of the case, declaring that the Bayh-Dohl [sic] Act is not applicable between universities and companies.

Duh, it isn't Dohl. Of course, the outcome of the case suggested Stanford University itself was a bit unclear on Bayh-Dole.

-->The end of the story, which suggests that Stanford University (and other universities) may have to go back to the drawing board:

“Anytime one gets a decision of this type, it’s certainly prudent to go back and review any policies or practices to make a determination as to whether any of those policies of practices should be altered or amended as a result of the case,” said Patrick Dunkley, a senior University counsel. “The University is in the process, at this point, of looking at its policies and its practices to determine if any modifications should be made.”

Some members of the law community also think it is conceivable that other universities and corporations may respond to this decision, noting that a decision of this magnitude would definitely be “on the radar” of any institution that deals with patent rights.

-->And, appropriately, the story ends with a cryptic comment by Mark Lemley, a person who is not a registered patent attorney and who once wrote that Gary Boone invented the integrated circuit:

“I think other universities and maybe other companies, too…anybody who has written their contract to say, ‘I promise to assign’ rather than ‘I hereby assign,’ is going to want to look at this and change what they do,” said Lemley.

“As I understand it from reading the opinion, I think it’s a correct application of its law,” he added. “The law itself is a little odd. The case law on standing to sue…should have a different rule.”

The law is clear, and not particularly odd: to sue to enforce a patent, one has to have ownership rights in the patent. Further, all owners must be joined to sue, as Lucent learned to its great disadvantage in the Microsoft suit. Stanford would have lost on either point.

See previous IPBiz post:

Stanford takes a hit at the CAFC in Roche HIV matter

As a footnote, the Stanford Daily notes that Holodniy (the key figure in the case) is currently a professor at the School of Medicine.

Disclaimer: LBE obtained his Ph.D. at Stanford University.


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