Be careful with your agreements: Bayh-Dole Act does not automatically confer ownership of inventions from inventors to institutions receiving federal funds

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Court holds Bayh-Dole Act simply assures that contractors may keep title to what they already have

The Supreme Court recently held in Stanford v. Roche that the Bayh-Dole Act (also known as the University and Small Business Patent Procedures Action of 1980, the “Act”) does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions. Instead, the Act “simply assures contractors that they may keep title to whatever it is they already have.” Therefore, the institution may retain its ownership provided it meets the remaining requirements of the Act only if it has an agreement with an inventor assigning his or her rights in a federally funded invention.

Upon joining Stanford University, Dr. Mark Holodniy agreed “to assign” to Stanford his “right, title and interest in” inventions resulting from his employment at Stanford. As part of this research, Dr. Holodniy’s supervisor arranged for him to conduct research at Cetus, a research company developing methods for quantifying blood-borne levels of HIV. As a condition for gaining access to Cetus, Dr. Holodniy signed a second agreement by which he actually assigned to Cetus his “right, title and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access.”

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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.

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