Technology Transfer Lessons from Stanford v. Roche

August 16, 2011, 3:46 PM

In its June, 2011 decision in Stanford v. Roche, the U.S. Supreme Court ruled that the Bayh-Dole Act, governing federal funding of university research, does not override the rule that invention rights belong to the inventor, not to his or her employer. The facts of the case are interesting, in that they involve work by the inventor, a Stanford University employee, for a private company that was actually arranged by the University, and competing assignments of patent rights stemming from the work to both Stanford and the private company. The outcome of the case that the assignment to the private company by the inventor gave it the right to exploit his invention without infringing any rights of Stanford turned on the language in the competing assignment documents, and the courts holding with regard to the effect of the Bayh-Dole Act on inventors rights.

While many technology transfer professionals have relied on assumed ownership by universities of inventions conceived or reduced to practice with federal funding, the Stanford v. Roche decision makes clear that this is not the case. In doing so, it underscores the need for clear and redundant reduction to writing of university researchers assignments of patent rights in inventions made in the course of their work for or at the direction of the university. It also gives important guidance on exactly how such assignments of intellectual property rights in employment agreements, confidentiality/nondisclosure agreements, intellectual property policy documents, invention disclosure forms and other documentation of the universitys rights in patentable inventions by its researchers and faculty should be written. The Supreme Courts decision should be mandatory reading for all university technology transfer professionals. --Robert E. Smartschan