Bayh-Dole Act Junkies - Federal Funding & IP Ownership

10/13/2010

Bayh-Dole Act Junkies - Federal Funding & IP Ownership

Stanford University and Roche have been battling over who owns rights to three key patents used in HIV test kits marketed by Roche. The legal wrangling stems from some of this research being federally funded at Stanford and Bayh-Dole would seem to assign rights to inventions in that case to Standford.

However, a Stanford researcher who was one of the inventors, performed some of the work at Cetus (subsequently purchased by Roche) using their labs, reagents and methods .. and signed a Visitor's Confidentiality Agreement (VCA) assigning his rights to Cetus. He also signed a Copyright and Patent Assignment (CPA) agreement to the University assigning rights to them as well.

Hmmm. The Federal Circuit Court overturned the lower District Court's ruling last week and sided with Roche. Among interesting findings in the court's decision was that Stanford had no standing because it ruled Roche did have rights to the patents in question. Further, Roche's language in the VCA was slightly better than that in Stanford's CPA. The VCA amounted to a "present transfer of rights" while the CPA amounted to a "promise to assign" rights to future inventions. Therefore the researcher signing the VCA assigned his rights immediately to Cetus (Roche) and only promised to assign his rights to Stanford in the future -- the court ruled he had nothing to assign as he had already given them to Cetus -- though he signed the Stanford agreement first. Fun, huh.

Some have called the court's ruling "hair-splitting" and contrary to how title to "subject inventions" was supposed to work under Bayh-Dole - which calls for title to reside with the organization (e.g. Stanford) which carries out the sponsored research.

For a much much much better dissection of the story, and the legal analysis from both points of view, I refer you to the excellent Patent Docs blog and further recommend that you read the comments as well.