Stanford V. Roche: Bayh-Dole Does Not Automatically Vest Title to Federally Funded Inventions in Federal Contractors

more+
less-

On June 6, 2011, in a 7-2 affirmance, the Supreme Court held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. In reaching this holding, the Supreme Court embraces and upholds two core tenants of patent law: (1) ownership vests in the inventor(s) and (2) mere employment is not sufficient to vest title to an employee’s invention in the employer. More particularly, the Bayh-Dole Act does not “set aside two centuries of patent law” which clearly vests patent rights in the inventors; absent an assignment of such patent rights by the inventor(s) to a third party. (slip op. at 9). “We are confident that if Congress intended such a sea change in intellectual property rights it would have said so clearly — not obliquely through an ambiguous definition of ‘subject invention’ and an idiosyncratic use of the word ‘retain.’” (slip op., at 14).

A summary of key facts is set forth below:

- Cetus (private company) collaborates with Stanford scientists.

- Dr. Holodniy joins Stanford and signs a Copyright and Patent Agreement (CPA) where he “agree[d] to assign” to Stanford his “right, title and interest in” inventions resulting from his employment at the University.

- Dr. Holodniy conducts PCR-related research at Cetus after signing Visitor’s Confidentiality Agreement (VCA) which states that Holodniy “will assign and do[es] hereby assign” to Cetus his “right, title and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access” to Cetus....

Please see full alert below for more information.

LOADING PDF: If there are any problems, click here to download the file.

Written by:

Published In:

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© King & Spalding | Attorney Advertising

Don't miss a thing! Build a custom news brief:

Read fresh new writing on compliance, cybersecurity, Dodd-Frank, whistleblowers, social media, hiring & firing, patent reform, the NLRB, Obamacare, the SEC…

…or whatever matters the most to you. Follow authors, firms, and topics on JD Supra.

Create your news brief now - it's free and easy »

All the intelligence you need, in one easy email:

Great! Your first step to building an email digest of JD Supra authors and topics. Log in with LinkedIn so we can start sending your digest...

Sign up for your custom alerts now, using LinkedIn ›

* With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name.
×
Loading...
×
×