Stanford University v. Roche Molecular Systems, Inc.
Issues
May an employee of a university receiving government funding assign the rights in an invention to a third party without the university’s consent, or does the university retain the rights to the invention under the Bayh-Dole Act?
In the late 1980s, Dr. Mark Holodniy, a Stanford University researcher, conducted part of his research at a private biotechnology company. The result of his work, which was partially funded by the government, was an improved method for testing the effectiveness of HIV treatments. Over the next few years, Roche Molecular Systems, the owner of the biotechnology company at which Dr. Holodniy conducted his research, incorporated his invention into its publicly sold HIV-testing kits. At roughly the same time, Stanford, Dr. Holodniy’s employer, began the process of patenting the invention under the University and Small Business Patent Procedure Act, commonly known as the Bayh-Dole Act. In 2005, Stanford sued Roche for patent infringement, arguing among other things that the Bayh-Dole Act gave Stanford the exclusive first right to acquire ownership of Holodniy’s invention. The district court ruled for Stanford, but the Federal Circuit reversed, holding that an assignment of ownership rights in an earlier confidentiality agreement between Holodniy and the biotechnology company trumped Stanford’s ownership rights. Now, the Supreme Court must decide whether the Bayh-Dole Act prevents individual inventors from assigning to third parties their ownership rights in federally funded inventions.
Questions as Framed for the Court by the Parties
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.
In the late 1980s and early 1990s, a team of scientists working at Stanford University and Cetus Corporation laboratories developed a method to discern the efficacy of HIV drug treatments. See Stanford Univ. v. Roche Molecular Sys., 583 F.3d 832, 837 (Fed. Cir.
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Additional Resources
· Bloomberg.com: Stanford-Roche Patent Fight Draws U.S. Supreme Court Review (Nov. 1, 2010)
· Economist: Innovation’s Golden Goose (Dec. 12, 2002)