• October 31, 2014

Supreme Court to Hear Case on Universities' Rights to Own Faculty Inventions

The U.S. Supreme Court, siding with Stanford University and a host of other research universities, has agreed to hear a case that could solidify the legal grounds for universities to claim ownership of faculty inventions derived from federally sponsored research.

The universities and several academic groups had urged the high court to take the case and clarify that the intellectual-property rights granted to universities under the 1980 Bayh-Dole Act supersede any "side agreements between individuals and third parties."

The Obama administration had also urged the court to take up the case, known as Stanford v. Roche.

The case arose from a 2005 patent dispute between Stanford and a company now owned by Roche Holdings AG. Stanford had sued the company for patent infringement, alleging that the university owned the rights to a test used in the treatment of AIDS because the work was financed in part with federal grants and the inventor, following standard practice, had assigned his rights to any inventions that might arise to the university.

But a federal appeals court in 2009 said that Stanford could not sue because the researcher, Mark Holodniy, who was also consulting for a company called Cetus, had given that company ownership rights. Cetus was later acquired by Roche.

Stanford, along with many research institutions and associations, said leaving the appeals-court ruling unchallenged would create a cloud of doubt over the ownership of thousands of university inventions.

The acting solicitor general in the Obama administration, Neal K. Katyal, echoed those sentiments in a friend-of-the-court brief filed in October, which said the appeals-court ruling undermined the intent of the Bayh-Dole Act and "turns the act's framework on its head."

Comments

1. 11134078 - November 01, 2010 at 03:58 pm

The results of research conducted with federal money should belong to the federal government. Period.

2. optimysticynic - November 01, 2010 at 04:09 pm

Agreed... but business, especially pharma and medical equipment, owns the government.What to do?

3. dubious - November 01, 2010 at 04:13 pm

"The results of research conducted with federal money should belong to the federal government. Period."

Been there. Done that.

The results of research conducted with federal money should benefit the public. Prior to 1980, the Feds did a terrible job commercializing inventions. Bayh-Dole is far from perfect, but it does work.

4. optimysticynic - November 01, 2010 at 04:29 pm

Dubious, "but it does work. For whom?

Try reading: White Coat, Black Hat: Adventures on the Dark Side of Medicine by Carl Elliot.

I've "been there, done that" on the private side and it ain't pretty!

5. lcro5205 - November 01, 2010 at 05:38 pm

The Supreme Court is very industry friendly so don't get your hopes up.

6. supertatie - November 05, 2010 at 11:45 am

Universities aren't "perfect," (whatever THAT means) at commercializing things invented there, but it is far better to have hundreds of research universities pursuing things that may be in the public interest than one monolithic government. I would much rather have the feds fund researchers, and allow the researchers themselves to decide what scientific advancements are the most interesting.

Additionally, the prospect of commercialization has forced universities to think about applications for their research, to change their culture to be more hospitable to entrepreneurially-minded faculty, and to consider other sources of income besides tuition and tax revenues. And these are all net benefits.

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