Supreme Court Decision in Stanford Case — Congressional Tech Transfer Caucus Holds Briefing

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by Gary Jones

FLC Washington, DC Representative

Greetings from D.C. The Supreme Court has handed down its decision in the Stanford v. Roche case (see December 2010 column), affirming the lower court’s decision to dismiss Stanford’s initial suit.

The case focused on research conducted by a Stanford employee for a Roche-owned firm (but with federal money involved) that resulted in HIV-related patents. Stanford believed it owned the intellectual property under the Bayh-Dole Act, yet the inventor assigned ownership to the Roche firm in his research agreement with them. In 2005 Stanford sued Roche for infringement after failing to reach a licensing agreement. In October 2009, the Federal Circuit Court of Appeals dismissed Stanford’s suit, saying that the agreement the inventor had with the Roche-owned firm (that the inventor "will assign and do hereby assign his rights of ownership of the invention") trumps Stanford’s policy requiring inventors to "agree to assign" ownership at a future date.

The following language from the Court’s majority opinion sums up its position very succinctly: "Since 1790, the patent law has operated on the premise that rights in an invention belong to the inventor. The question here is whether the University and Small Business Patent Procedures Act of 1980—commonly referred to as the Bayh-Dole Act—displaces that norm and automatically vests title to federally funded inventions in federal contractors. We hold that it does not (my emphasis)."

Intellectual property (IP) professionals—and university tech transfer folks particularly—are still assessing what, if any, impact this may have in practical terms on the IP rights provided under the Bayh-Dole Act going forward. Will there be fundamental changes to ownership of IP created under federally funded research, or does it just mean that universities will need to be more careful how they write employment agreements?

The Supreme Court decision can be found at http://www.supremecourt.gov/opinions/10pdf/09-1159.pdf.

In unrelated news, the Congressional Technology Transfer Caucus, created in January by Reps. Lujan (D-NM-3rd) and Wolf (R-VA-10th) to focus on commercializing research from federal labs, held a short preliminary briefing in early June to highlight specific tech transfer efforts at the Department of Energy (DOE) and one of its laboratories. Rep. Lujan opened the briefing by noting, "What we’re trying to do is make sure that tech transfer and commercialization are part of every discussion to reinvigorate U.S. manufacturing." Panelists from DOE headquarters and Los Alamos National Laboratory (LANL) highlighted new tech transfer efforts at DOE and LANL, and pointed to the role of federal tech transfer in supporting economic development efforts.

This initial briefing was aimed primarily at other congressional staffers to educate them on the role federal tech transfer plays in the national economy. Presumably, future briefings and policy discussions emanating from the caucus will incorporate tech transfer activities beyond only the DOE (government-owned, contractor-operator labs) and include issues associated with government-owned, government-operated labs (e.g., DOD, NIH, USDA, etc.). We’ll keep an eye on it.

Gary can be reached at gkjones@federallabs.org.