Out-Law News 2 min. read
20 Jun 2011, 5:18 pm
The Court upheld a Court of Appeal decision that patent law the Bayh-Dole Act does not automatically give institutions "unilateral" right to its academics' inventions if research leading to the inventions is part-funded by Government, the Court said.
"Universities typically enter into agreements with their employees requiring the assignment to the university of rights in inventions," the ruling (31-page /218KB PDF) said.
"With an effective assignment, those inventions – if federally funded – become 'subject inventions' under the Act, [and] ... it does so without violence to the basic principle of patent law that inventors own their inventions," the ruling said.
Subject inventions are defined in the Bayh-Dole Act as "any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement," the ruling said.
"Because some of Stanford’s research on the HIV measurement technique was funded by the National Institutes of Health, the Bayh-Dole Act applied," the ruling said.
The Court's decision means that Stanford University cannot sue Roche Molecular Systems for patent infringement. Stanford University had argued that its rights to three patents superseded the rights belonging to Roche, the ruling said.
Stanford obtained the rights to academic research conducted by its academic Dr Holodniy, the ruling said. Roche acquired an agreement signed by Dr Holodniy giving it rights to use inventions derived from research conducted by the academic, it said.
Stanford could not claim it had unilateral rights to the patents because it had received funding from Government to help with the research it had patented, the Supreme Court ruled.
"The Bayh-Dole Act applies to subject inventions 'conceived or first actually reduced to practice in the performance of work' 'funded in whole or in part by the Federal Government'," the Supreme Court ruling said.
"The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorise contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have," the ruling said.
"Such a provision makes sense in a statute specifying the respective rights and responsibilities of federal contractors and the Government," the ruling said.
Dr Holodniy joined Stanford's Department of Infectious Diseases in 1988 and signed an agreement to give Stanford rights to his inventions, the ruling said. Dr Holodniy spent time devising a procedure for calculating the amount of HIV in patients' blood during a secondment with research company Cetus which obtained a written agreement from Dr Holodniy to rights to his inventions that stemmed from the skills he developed whilst at Cetus.
Dr Holodniy returned to Stanford, which received funding from the National Institutes of Health for developing HIV measurement techniques, the ruling said. Stanford registered three patents relating to the techniques Dr Holodniy had developed and obtained written assignments of his rights to the inventions, the ruling said.
Roche bought Dr Holodniy's agreement from Cetus and then launched HIV test kits following clinical trials at the research group, the ruling said. Stanford sued Roche for patent infringement, it said.
Stanford had argued that not giving it sole rights to the patents would "fundamentally undermine" the Bayh-Dole Act's framework and threaten its continued "successful application", but the Supreme Court disagreed.
