Supreme Court Holds Bayh-Dole Act Does Not Independently Vest Ownership to Federally Funded Contractors
By Daniel Robinson – Edited by Esther Kang
Bd. of Tr. of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., 563 U.S. ____ (June 6, 2011)
Slip Opinion (via supremecourt.gov)
The Supreme Court affirmed the Federal Circuit, which had held that the Bayh-Dole Act did not void an inventor’s assignment of intellectual property rights to a company.
The Court held in a 7-2 decision that Stanford University had no standing to sue Roche Molecular Systems for infringing an HIV testing procedure patent because the company was a co-owner of the patent. In so holding, the Court stated that the Bayh-Dole Act, which permits federally funded contractors to retain patents to their inventions in certain situations, does not independently divest a contractor’s employee and vest title in the contractor.
SCOTUSBlog provides an overview of the case. The New York Times criticizes the decision, saying it undermines the purpose of the Bayh-Dole Act. IPWatchdog features a thorough analysis of the decision. (more…)