Supreme Court Holds Bayh-Dole Act Does Not Grant Contractors Patent Ownership Rights to Federally Funded Inventions

more+
less-

The Supreme Court today, for the first time, interpreted the Bayh-Dole Act, a federal statute regulating ownership of patents arising from federally funded research, and gave it a narrower scope than many had traditionally understood it to have.

The Supreme Court’s decision in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. No. 09-1159, rejected the arguments of Stanford University and the United States that the Bayh-Dole Act vested title to federally funded inventions with the eligible federal contractor (e.g., universities, non-profit organizations, or small businesses). The Supreme Court instead held that the Bayh-Dole Act permits contractors only to retain title to patents that they already possessed through other means, such as assignment provisions in employment contracts with the inventors.

Although the Court concluded that any threat that its decision posed to the effectiveness of the Bayh-Dole Act could be avoided by contractual arrangements between the federal contractors and their employee-inventors, the Court’s decision could raise significant questions about the ownership rights for innumerable inventions made prior to the Court’s decision. The Court’s decision also will affect the possibilities of commercializing federally funded inventions, requiring those who seek to purchase rights from contractors to evaluate the rights held by the contractor vis-a-vis the inventor and any third parties with whom the inventor has contracted.

Please see full alert below for more information.

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


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.

© Morrison & Foerster LLP | Attorney Advertising

Written by:

more+
less-

Morrison & Foerster LLP on:

Popular Topics
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*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. Or, sign up using your email address.
×
Loading...
×
×