In its decision announced yesterday in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 563 U.S. ___ (2011), the Supreme Court clarified the ownership of inventions resulting from research funded by the U.S. government. The seven-member majority held that under the Bayh-Dole Act, title to federally funded inventions remains with the inventor and does not automatically vest with the employer receiving the federal funds.

The Bayh-Dole Act allocates ownership rights to inventions arising from federally funded research performed by individuals, small business firms or nonprofit organizations. Under the Act, these so-called "federally funded contractors" may "elect to retain title to any subject invention" arising out of research funded by federal monies. 35 U.S.C. § 202(a). Should the federally funded contractor elect not to retain title to the invention, the "Federal Government may receive title" to the invention or the Government "may consider and after consultation with the contractor grant requests for retention of rights by the inventor." Id. at § 202(c)(1)-(3) & (d).

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