Supreme Court to hear Stanford-Roche case

Nov. 2, 2010, 2:00 a.m.

The Supreme Court announced Monday it will review a lawsuit between the University and biotechnology firm Roche Molecular Systems. The suit will test standing interpretations of the Bayh-Dole Act, a 1980 intellectual property law, by deciding whether a university’s right to patents that arise from federally funded research can be terminated by the researcher through a separate agreement with a third party.

The case stemmed from a licensing dispute between the University and Roche over the ownership of patents used in the company’s HIV test kits. School of Medicine professor Mark Holodniy developed the technology behind the kits. As a researcher at the University, patents from his work would normally be automatically assigned to Stanford. But because of a contract Holodniy signed, ownership isn’t so clear.

While a postdoctoral fellow at Stanford, Holodniy worked at Cetus, an early biotechnology firm where polymerase chain reactions (PCR) were first developed. As a condition of his employment, he signed an agreement that assigned the rights to inventions derived from PCR to Cetus, which has since been acquired by Roche. The fundamental technology behind Holodniy’s HIV-detection process is PCR.

Stanford argues that the Bayh-Dole Act negates any act Holodniy took that might assign ownership of his invention to Cetus, making Stanford the whole owner of the disputed patents. Roche contends that nothing in the act permits Stanford to void the agreement between Holodniy and Cetus, arguing that the University and Roche hold dual ownership over the patents.

Arguments for the case, Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, 09-1159, will be heard in the coming months and a ruling is expected by the first half of next year.

–Tyler Brown

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