In an important new decision, the Supreme Court held that Congress did not change one of the fundamental precepts of patent law – that the individual inventor is the original owner of invention – obliquely, through an ambiguous definition of “subject invention” and an idiosyncratic use of the word “retain.”
But I found the actual story of how two different invention assignments were signed interesting. Stanford hired a research fellow to test the efficacy of new AIDS drugs and he signed a invention assignment agreement with Stanford. Stanford then arranged for him to conduct research at Cetus, the predecessor in interest to respondent Roche, where he also signed an invention assignment agreement for Cetus. Oh, this sort of stuff gives the in house legal department nightmares. We tell them to ask first, really we do.
The Federal Circuit held that in the duel of the assignment forms Cetus won, a holding that wasn’t appealed but that was heavily criticized in a dissent by Breyer and Ginsburg and also shared by Sotomayor in a concurrence. Odds on whether others pick up this torch?
Board of Trustees of the Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. 09-1159 (June 6, 2011).
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