Monday, June 06, 2011

Stanford loses in Roche case at Supreme Court

The Supreme Court opinion, authored by CJ Roberts, begins with the

Since 1790, the patent law has operated on the premise
that rights in an invention belong to the inventor. The
question here is whether the University and Small Busi-
ness Patent Procedures Act of 1980—commonly referred to
as the Bayh-Dole Act—displaces that norm and automati-
cally vests title to federally funded inventions in federal
contractors. We hold that it does not.

There is reference to an amicus brief of
Pharmaceutical Research and Manufacturers of America:

In a world in which there is frequent collaboration between private
entities, inventors, and federal contractors, the absence of a
provision in the Bayh-Dole Act to permit an interested third
party or an inventor to challenge a claim that a particular
invention was supported by federal funding would be deeply
troubling, unless the Bayh-Dole Act
applies only when a federal contractor has already ac-
quired title to an inventor’s interest.

The decision concludes with the text:

Stanford contends that reading the Bayh-Dole Act as
not vesting title to federally funded inventions in federal
contractors “fundamentally undermin[es]” the Act’s frame-
work and severely threatens its continued “successful
application.” Brief for Petitioner 45. We do not agree. As
just noted, universities typically enter into agreements
with their employees requiring the assignment to the
university of rights in inventions. With an effective as-
signment, those inventions—if federally funded—become
“subject inventions” under the Act, and the statute as a
practical matter works pretty much the way Stanford says
it should. The only significant difference is that it does so
without violence to the basic principle of patent law that
inventors own their inventions.

The judgment of the Court of Appeals for the Federal Circuit is affirmed.


Blogger New said...

This case underscores the vast differences between copyright and patent law; particularly considering the federal-funding angle, I somewhat expected the Court to rule in favor of the employer. Anyway, this patent litigation should serve as a lesson (especially to universities) that it's not always enough to reduce agreements to writing; you also have to make sure that such agreements are legally airtight.

5:42 PM  

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