Washington, D.C. – On February 28, the United States Supreme Court heard oral arguments in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, a patent ownership case that has implications for Indiana patent attorney. Under the Bayh-Dole Act,35 U.S.C. §§ 200-212, institutions using federal funding to perform research gain patent rights to inventions created through the federally-funded research. In this case, an inventor performed some research while he worked for Stanford University and had signed a patent ownership assignment agreement with Stanford. The inventor later left this employment and performed further research, culminating in an invention, while employed by Roche. He had also signed a patent assignment agreement with Roche. The question is now whether Stanford or Roche has patent rights to his invention.
The official question presented was “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.” According to an analysis of the oral argument by the SCOTUS Blog, several justices seemed to doubt that the university could retain rights to the patent. The Federal Circuit Court of Appeals ruled in favor of Stanford.
Former Indiana Senator Birch Bayh filed an amicus curaie brief in support of Stanford University. Senator Bayh was a principle sponsor of the Bayh-Dole Act, which Congress passed in 1980. Indianapolis-based Eli Lilly & Company and five other corporations joined an amicus brief in support of Roche.
An audio recording of the oral argument is available here. The merits briefs, including the amicus briefs, are available online on the American Bar Association‘s website. The docket number in the U.S. Supreme Court is 09-1159.
Practice Note: This case is of interest to Indiana patent attorneys because both Indiana University and Purdue University have very active technology licensing programs. Expect to see more coverage of this case when the Court announces its decision.