• The Supreme Court and Ownership of Patents

    by  • November 8, 2010 • patent

    The Supreme Court recently granted certiorari to decide a question of patent ownership.  The case is Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. and involves interpretation of the Bayh-Dole Act of 1990.  The Bayh-Dole Act discusses, in the case of federally-funded research, the relative rights of patent ownership between the federal government and the university, small business or non-profit receiving the funds.  What isn’t clear is how the inventor’s ownership rights fit into the scheme. The question presented is:

    Whether a federal contractor university’s statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.

    Dennis Crouch at Patently-O has a great summary on the case.

    Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 09-1159.
    Federal Circuit opinion here.
    Creative Commons License
    The text of this work is licensed under a Creative Commons Attribution-No Derivative Works 3.0 United States License.