Patent Law Practice Center

Stanford v. Roche and Ownership of Federally Funded Research: Navigating the Vagaries of Contract Law

Mary Hess Eliason, an Associate with Birch Stewart Kolasch and Birch, sent in this article discussing the recent Supreme Court decision of Stanford v. Roche .  The article highlights key points in both Chief Justice Roberts’ majority opinion and Justice Breyer’s dissent and questions whether this case presented the appropriate fact situation to address the issues at hand.

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law.[1] The Supreme Court Opinion of Stanford v. Roche reinforces this maxim in the context of federally funded research.  The issue brought before the Supreme Court was, in the context of federally funded research, whether the ownership of the invention automatically arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with any right of the federal contractor by assigning the invention to a third party.[2]

In their recent majority opinion, the Supreme Court decided that, based on contract law, an Inventor could assign an invention to a third party, even if the invention was federally funded under Bayh-Dole. (more…)

Gene Quinn on the Supreme Court’s Stanford v. Roche Decision

Big news for the technology transfer world…. earlier today, the Supreme Court issued it’s decision in Stanford v. Roche. The issue in the case was, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.  Gene Quinn, of IPWatchdog and Practice Center Contributor, passed along this article summarizing the opinion and what lasting consequences, if any, it will have on the patent community.

This morning the United States Supreme Court issued its decision in Stanford v. Roche, a decision that has been much anticipated in the technology transfer world.  Technology transfer is the front line for the interfacing of University research and private sector commercialization, so it is no great wonder that this case captured the attention of academia and the private sector alike. At issue in the case was whether the Bayh-Dole Act automatically vested ownership of patent rights in Universities when the underlying research was federally funded.

It is not at all an exaggeration to say that Bayh-Dole is one of the most successful pieces of domestic legislation ever enacted into law. The Bayh-Dole Act, which was enacted on December 12, 1980, was revolutionary in its outside-the-box thinking, creating an entirely new way to conceptualize the innovation to marketplace cycle. It has lead to the creation of 7,000 new businesses based on the research conducted at U.S. Universities. Prior to the enactment of Bayh-Dole there was virtually no federally funded University technology licensed to the private sector, no new businesses and virtually no revolutionary University innovations making it to the public. Bayh-Dole set out to remedy this situation, and as a direct result of the passage of Bayh-Dole countless technologies have been commercialized, including many life saving cures and treatments for a variety of diseases and afflictions. In fact, the Economist in 2002 called Bayh-Dole the most inspired and successful legislation over the previous half-century. Nevertheless, the question remained, at least until this morning, whether ownership of patent rights immediately vested in the University as the result of federal funding.

Click here to read Gene Quinn’s full publication.

 

Emotion And Anecdotes Should Not Drive Patent Policy Debate

Written by Gene Quinn (Founder of IPWatchdog.com and Practice Center Contributor)

Emotion and anecdotes unfortunately drive the debate on IP policy, particularly patent policy, because most people are suspicious and predisposed against monopolies. That is certainly understandable, at least in a vacuum. Who among us likes monopolies? Monopolies charge super competitive prices and consumers have no leverage, which leads frequently to inferior goods or services that consumers are forced to accept. This aversion to monopolies has been ingrained in American culture and heritage since the founding of the Nation, and was taken to new extremes during President Theodore Roosevelt’s Administration. Roosevelt stood up for the little guy and became known as a trust buster, what today we might refer to as a monopoly killer.

Unfortunately for those who seek to leverage the appropriate suspicion against monopolies, a patent is not a monopoly. A patent does confer exclusive rights, but as every inventor knows the fact that you have a patent does not guarantee that anyone will be interested in the good or service associated with the patent grant. Without interest there is no market, without a market there can be no monopoly. So patents are not equivalent to creating a monopoly.

Read the rest of the article at IPWathchdog.com.