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.
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One response to “The Supreme Court and Ownership of Patents”
It’s always interesting to me when patent litigation directly involves Bayh-Dole issues, and this case seems particularly intriguing. However, I can see an argument that an innovation by a university-employed inventor constitutes a “work-for-hire” — comparable to such situations in copyright law — and that therefore the university holds the rights of first possession attaching to an invention. Any comments?