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Stanford v Roche patent fight

Written by Jean-Michel Omanga on 08 November 2010

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Background

The US Supreme Court justices agreed to hear Stanford University's claim against Roche Holding AG in respect of patents for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma. Scientists at Stanford created the invention while under a contract to promise to assign the inventions to the university. However, one of the inventors, Professor Holodniy had also prior to the invention actually assigned his rights in future inventions to Cetus (now Roche).

Stanford filed a patent application and demanded a royalty from Roche for their use of the patent. The case reached the US Court of Appeals for the Federal Circuit who held that Roche was not liable for patent infringement because they held ownership rights derived from Holodniy's assignment. In their appeal to the Supreme Court, Stanford are arguing that because they were beneficiaries of federal funding for the research under Sections 200-212 of the Bahy-Dole Act their rights trump that of Roche.

Legal question

The university's question to the Supreme Court reads as follows: Whether a 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.

Held

The US Department of Justice filed amicus curiae brief in support of Stanford's writ and argue that the Bahy-Dole Act does indeed trump the general proposition that ownership of a patent vests first with the inventor. This case will be a somewhat obscure but important case for university and federally funded research institutions. The lesson being, make sure your researchers and scientists have entered into strict assignment agreements with your institution.

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