Federally-Funded Patents: Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.

Patenting has shifted from purely and industry practice to one that has become adopted by universities. This comes at no surprise with the passage of the Bayh-Dole Act of 1980 (which allows universities to claim ownership of inventions) as well as the emergence and growth of start-ups, incubators, and university technology transfer offices. However, ownership rights regarding university research can get tricky. There are often various sources of funding that drives university research - from government funding to funding by the private sector. With these multiple stakeholders involved, once an invention is invented, who should receive the intellectual property rights of the invention.

Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (Stanford v. Roche) is a Supreme Court case situated in the realm of university licensing and patents. Stanford v. Roche presents the question as to whether patent rights over inventions that result from federally funded research must be awarded to the university at which inventors work at.

This case emerged over a licensing dispute between Stanford University and the pharmaceutical company Roche regarding the patent on Roche's HIV testing kits. The HIV testing kits at hand were developed by Mark Holodniy, a professor at Stanford School of Medicine who had signed a collaborative research contract with Cetus Corp, a company later acquired by Roche. Stanford sued Roche in an attempt to claim intellectual property rights over the HIV testing kit technology.

Pictured: Mark Holodniy

In 2009, the U.S. Court of Appeals decided this case in favor of Roche, on the grounds that Stanford had no standing to claim patent infringement. In 2011, the Supreme Court decided in favor of Roche in a 7-2 decision. The court argued that

"The Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions" (1).
I personally find this case interesting because there is a lot of research going on at universities that results in inventions, and this research is sometimes funded by the private sector. The decision in Stanford v. Roche shows that as a researcher at a university, the technology transfer may not be a smooth, clear process.

(1) https://www.oyez.org/cases/2010/09-1159
(2) http://www.ipwatchdog.com/2011/06/06/supreme-court-affirms-cafc-in-stanford-v-roche-on-bayh-dole/id=17594/
(3) http://static01.nyt.com/images/2011/06/07/business/07bizcourt-inline/07bizcourt-inline-popup.jpg
(4) http://www.ipeg.com/wp-content/uploads/2010/11/University-professor_19287067_M1.jpg

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