The Supreme Court has reaffirmed the “basic principle” of patent law that patent rights vest initially in the inventor and not the inventor’s employer. In Bd. Of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. 09-1159 (2011), the court ruled, 7–2, that the Bayh-Dole Act, which governs ownership of inventions made with federal funds, did not change that principle. That is, the Act does not automatically vest title to federally funded inventions in the contractors who receive government funds.

But the case might be more significant for the shadow it casts on Federal Circuit law governing assignment provisions in contracts. While the majority ignored the issue, the dissent and concurrence criticized the Federal Circuit’s licensing doctrine that a present assignment of a future invention—i.e., “I hereby assign my rights in anything I invent after this agreement”—automatically conveys legal title in the patent to the assignee upon filing of the application. The decision could have important implications for future patent ownership disputes.

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