Recent Supreme Court Decision May Affect Federally Funded Research


The U.S. Supreme Court recently considered an important issue under the Bayh-Dole Act in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. The Act, passed by Congress in 1980, is intended to "promote the utilization of inventions arising from federally sponsored research," to "promote collaboration between commercial concerns and non-profit organizations" and to "ensure that the Government obtains sufficient rights in federally funded" inventions. It specifically provides a framework for universities to retain title to such inventions, but, as the Court ruled to the disappointment of Stanford and other research institutions, the framework does not relate to acquiring title.

The Supreme Court case involved a Stanford employee who "agreed to assign" inventions to Stanford when the inventions resulted from employment there. The employee then signed an agreement with a collaborating company (later acquired by Roche). The agreement with the company provided that the employee "will assign and does assign" each idea, invention and improvement made as a consequence of access to information at the company. Stanford filed patents on the inventions based upon rights believed to have been acquired under the employee's agreement to assign and the Bayh-Dole Act. Stanford later sued Roche for patent infringement.

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