Venable Team Files Amicus Brief for Senator Bayh in Support of Bayh-Dole Act in Stanford v. Roche


On December 23, 2010, Venable attorneys William Coston, John Cooney, Michael Gollin, and David Conway filed a Supreme Court amicus brief on behalf of former United States Senator Birch Bayh in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, No. 09-1159. A copy of the brief is available here (see article below for link). Senator Bayh, a Venable partner, is the co author of the Bayh-Dole Act, the statute that forms the basis for the modern university technology transfer system. The Act allows universities, small businesses, and nonprofit organizations to retain and manage patent rights in inventions created in their laboratories as a result of federal research grants. The case involves a dispute between Stanford University and Roche Molecular Systems over the ownership of three patents claiming methods for quantifying HIV in human blood samples. The Supreme Court will decide whether a Stanford scientist could unilaterally terminate the university’s ownership rights under the Bayh-Dole Act by separately assigning his individual rights to Cetus, a biotechnology company that subsequently transferred its rights to Roche. Oral arguments are scheduled for February 28, 2011.

Prior to the Bayh-Dole Act, inventions arising from federally funded research typically became the property of the government funding agency, which would make them freely available to all competitors under nonexclusive licenses. This system's inconsistent tech transfer policies and lack of core commercial incentive - limited exclusivity afforded by the patent system -- resulted in thousands of new inventions sitting on government shelves, undeveloped and never commercialized. The Bayh-Dole Act established a uniform system based on institutional ownership and control of inventions by universities, small businesses, and nonprofit organizations -- the entities in the best position to commercialize the inventions. It provides a framework to ensure that new technologies arising from federally-funded research are delivered to the marketplace as efficiently as possible. Since its enactment in 1980, the Bayh-Dole Act has been widely recognized as generating for America countless new jobs, new companies, new drugs, electronics, and other technologies in daily use. As testimony to its success, the Act has never been amended in the 30 years since its enactment.

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