U.S. Supreme Court hears Stanford v. Roche patent case

March 1, 2011, 2:00 a.m.

The U.S. Supreme Court heard oral arguments yesterday for the biotech patent case Board of Trustees of Stanford University v. Roche Molecular Systems.

The question presented to the Court is whether a university researcher, without the university’s consent, can assign the patent rights for federally funded inventions. These inventions are nearly always assigned to universities by law.

The case stemmed from a dispute between Stanford and the biotech company over the right to royalties on several patents that sprung from the work of School of Medicine professor Mark Holodniy. Holodniy’s research, which established a method to detect HIV, is now used in HIV test kits sold by Roche.

The crux of the conflict is an agreement signed by Holodniy when he went to work at Cetus, an early biotech firm where a “polymerase chain reaction” (PCR) technology was developed. PCR is a critical component of Holodniy’s HIV detection method, and the agreement stated that future developments based on Cetus technology would be its intellectual property.

Donald Ayer, representing Stanford University, opened yesterday’s hour-long oral argument.

“The inventor, because he is working here [at Cetus] at the time of the assignment on a federally funded project as an employee of Stanford University, is essentially working on something covered by Bayh-Dole,” Ayer said. “And being covered by Bayh-Dole means that he lacks the power to transfer title to this future invention to someone else, because the statute has already spoken for it.”

Chief Justice John Roberts shot back that Ayer cloaked himself in the interests of the United States.

It “has long been the rule that inventors have title to their patents initially, even if they make those inventions while working for somebody else,” Roberts said.

Several justices focused on the fine difference between “I will assign” and “I hereby do assign” clauses in the Stanford contract and Cetus agreement, respectively.

The Supreme Court did not indicate how it might rule on the case, though some justices did oppose a more expansive reading of the Bayh-Dole Act, which Stanford favors.

The Court is expected to make a ruling by July.

–Tyler Brown

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