STANFORD V. ROCHE
In Stanford v. Roche the district court held that although title to a federally funded invention initially vests in the named inventor, the Bayh-Dole Act requires individual inventors to assign their interests to the government or to the research institution that contracted for the federal funds unless both have waived their ownership rights. Because Stanford exercised their ownership right, the district held that the inventor had no interest to assign to Roche.
The three judge CAFC panel disagreed. They found that the professor owned initial title to his portion of the invention, and he could transfer the rights because neither the government nor Stanford had claimed the patent rights beforehand. The implications of this decision are enormous. The Bayh-Dole Act has been clear, title to federally funded inventions originally vest in the contracting research institution, not the inventor.
This issue is so critical to university technology transfer that universities and university associations filed an amicus brief in support of the Stanford position that Bayh-Dole determines ownership in federally funded inventions. The brief was filed on behalf of Wisconsin Alumni Research, Foundation, University of California, New Mexico Research Foundation, State University of New York, North Dakota State University Research Foundation, Rensselaer Polytechnic Institute, American Association of Medical Colleges, American Council on Education, Association of University Technology Managers, and Council on Governmental Relations.
The Bayh-Dole Act, so instrumental in the successful transfer of university technology to industry, is predicated on the conviction that universities must be able to pursue their mission of creating and disseminating knowledge in an open environment and, concurrently, protect their inventions through strong intellectual property laws. It also recognized that clear rights to inventions enable the private sector to trust that the universities have the ability to enter agreements to develop university technologies. As patent owners, universities depend on a high quality patent system that promotes certainty and confidence, and permits the enforcement of exclusive rights. If that system is strong and robust, technology transfer occurs and the public is benefited. If the system is weakened, the public benefit is reduced.
The amicus brief is asking the CAFC to have the all the members review the decision of the original three judge panel. It is our hope that the court would grant our request as quickly as possible and if we are successful the entire court would reverse the three judge panel.