McDonald Hopkins Intellectual Property Alert: Who Is the Patent Owner of Federally Funded Inventions?

Supreme Court to Hear Key Patent Ownership Issue

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Nov 18, 2010, 12:35 ET

CLEVELAND, Nov. 18, 2010 /PRNewswire/ -- On November 1, 2010, the United States Supreme Court decided to hear a patent ownership dispute between Stanford University and Roche. How the court decides the case could profoundly affect who owns the technological fruits of federally-supported research and development throughout the country.

The patents at issue cover methods for testing the efficacy of anti-HIV treatments. The court will decide whether Stanford University exclusively owns them or if an agreement signed in 1989 by a Stanford researcher gives Roche partial ownership. Stanford says that because it used federal grant money to develop the patented technology, the Bayh-Dole Act – which governs patents resulting from federally-supported research – makes it the one true owner. Roche says the Bayh-Dole Act does not matter because one of the Stanford co-inventors assigned his ownership share to Roche before Stanford elected ownership under the Bayh-Dole Act. According to Roche, the Bayh-Dole Act cannot force it to give up its share. The case is Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., No. 09-1159.

The specific issue the Supreme Court agreed to hear is "whether a federal contractor university's statutory right under the Bayh-Dole Act 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."

Click below to read the McDonald Hopkins Intellectual Property Alert:

McDonald Hopkins Law Firm Alert; Who is the Patent Owner of Federally Funded Inventions?

http://www.mcdonaldhopkins.com/alerts/alert.aspx?id=SZNTKAg3-k2NQvWY1IPKxA

For more information, please contact:
Matthew J. Cavanagh
216.348.5730
[email protected]

David B. Cupar
216.430.2036
[email protected]

About McDonald Hopkins

With more than 130 attorneys in Chicago, Cleveland, Columbus, Detroit, and West Palm Beach, McDonald Hopkins is a business advisory and advocacy law firm focused on business law, litigation, business restructuring, labor and employment, government affairs, healthcare, and estate planning. The president of McDonald Hopkins is Carl J. Grassi. For more information about McDonald Hopkins, visit http://www.mcdonaldhopkins.com.