Each year, the U.S. government provides billions of dollars in federal funding for research. The Bayh-Dole Act, 35 U.S.C. § 200 et seq., creates a framework for allocating rights in inventions developed with federal funds. Under the Act, college and university, non-profit, and small-business federal contractors may “elect to retain title” to an invention conceived or reduced to practice in the performance of federally funded research. 35 U.S.C. § 202(a). If the contractor does not elect to retain title, the federal government may grant rights in the invention to the inventor. 35 U.S.C. § 202(d).

Yesterday the Supreme Court granted certiorari in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., No. 09-1159, to address the interaction between the Bayh-Dole Act’s allocation of patent rights and assignment agreements between inventors and third parties. The question presented is whether an inventor employed by a contractor that elects to retain title to an invention may defeat the contractor’s right to retain title by assigning rights in the invention to a third party. The Court’s decision will affect both small-business contractors that are covered by the Act and companies that might seek to enter into assignment agreements with inventors employed by a covered contractor of any type.

Roche, the respondent in the Supreme Court, marketed and sold HIV test kits. The three inventors of the technology worked at Stanford University, the petitioner in the Supreme Court, and signed contracts in which they “agree[d] to assign” rights in future inventions to Stanford. During the development of the technology, one of the inventors, Dr. Holodniy, spent time at Cetus, a local biotech company that Roche later purchased, where he signed another contract in which he agreed that he “will assign and do[es] hereby assign” rights in future inventions to Cetus. Stanford subsequently filed a patent application for the underlying technology, and then elected to retain title to it under the Bayh-Dole Act. The Federal Circuit held that the initial rights in the invention lay with Dr. Holodniy; that, because Dr. Holodniy assigned his rights to Cetus, rather than simply “agreeing” to assign them (as he did with Stanford), Roche now possesses Dr. Holodniy’s rights in the invention; and that Stanford had no rights it could “retain” under the statute. 

In its petition for certiorari, Stanford argued that, independent of any agreement between Dr. Holodniy and Cetus, the Bayh-Dole Act gave Stanford the right to the patent once it exercised its election right, and that the Federal Circuit’s decision runs contrary to the Act, which provides patent rights to the inventor only with the government’s approval. The Supreme Court requested the views of the Solicitor General, who took the position that the Federal Circuit’s decision is incorrect, that the question presented is important, and that the Court should grant certiorari.

Absent extensions, amicus briefs in support of the petitioner will be due on December 23, 2010, and amicus briefs in support of the respondents will be due on January 25, 2011. Any questions about this case should be directed to Dan Himmelfarb (+1 202 263 3035) in our Washington, DC office..

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