Implications of Stanford v. Roche
on University-Industry Relations
The Bayh-Dole Act allows universities, rather than the U.S.
government, to hold title to inventions arising from federallyfunded research. But according to the Supreme Court's June 2011
decision in Stanford v. Roche, a university inventor holds the
original patent rights in even a federally-funded invention, and may
assign the invention to a corporation rather than the university.
The Stanford case involved a collaboration between a Stanford
researcher and a biotechnology company, which resulted in a
patented HIV diagnostic test, and when Stanford later sued the
company for patent infringement, Roche asserted that it owned the
patent, and the dispute turned on the wording of the inventor’s
assignment agreements. The Supreme Court ruled that the BayhDole Act did not automatically vest title to the researcher's patent
rights in the university. The Court affirmed that by its language,
the assignment to the corporation took precedence over the
assignment to the university. However, the Court did state that
where there are effective assignments from employees to
universities, the Bayh-Dole system will “work pretty much the way”
it always has.
In the wake of the Stanford decision, the Bayh-Dole technology
transfer community is left to consider the lasting impact of the
Court’s ruling. This note offers several practical suggestions for
universities and industries.
IMPLICATIONS FOR UNIVERSITIES
UNIVERSITIES SHOULD:
• Make sure that their employee assignment agreements include a
present conveyance of rights ("I hereby assign"), rather than a
promise to assign, to avoid the problem faced by Stanford and
should record assignments promptly.
• Adapt their policies, practices, and training to identify problems
that might arise when researchers sign industry agreements
that could conflict with their obligation to assign patentable
rights to the university (e.g., consulting agreements, visitor
agreements, and material transfer agreements).
• Prepare for due diligence by existing and new licensees
regarding chain of title for both older and newer inventions.
• Look for possible changes in federal agency grant agreements as
they relate to assignment of inventions.
IF YOU HAVE ANY
QUESTIONS, PLEASE
CONTACT US TODAY.
Michael A. Gollin
202.344.4072
[email protected]
David D. Conway
202.344.4489
[email protected]
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IMPLICATIONS FOR INDUSTRIES
CORPORATIONS SHOULD:
• When licensing, conduct due diligence and seek assurances
from university licensors that there are no encumbrances on
ownership of the licensed patent rights.
• When accused of infringement by a university, consider
attacking the university's standing on grounds of ineffective
assignment as in the Stanford case.
• Look for ways to resolve clouds on title and ownership conflicts
that may arise, e.g. through negotiation, mediation, or test
cases.