TTO Commentary: Stanford University v. Roche Molecular Systems, Inc.

On June 6, 2011, the Supreme Court issued a decision in Stanford University v. Roche Molecular Systems, Inc. (PDF) ruling that the Bayh-Dole Act does not alter an inventor’s ownership rights in his invention and federally funded contractors must obtain a legally-sufficient assignment from their employee inventors. Many universities, including the University of Colorado, supported Stanford’s argument that the Bayh-Dole Act operated to automatically vest title to federally-funded inventions in federal contractors. Stanford argued that the automatic vesting would preserve the federal investment and prevent any inadvertent loss of title which could occur when federally-funded inventors collaborate with private parties. The Supreme Court rejected Stanford’s argument finding no such explicit language in the Act to create the automatic vesting.

It would be a disservice to federal contractors to say they have only relied on the Bayh-Dole Act to accomplish an assignment of inventions. Federal contractors and universities have long-standing policies and practices to obtain such assignments from their employees, documents which are necessary to file patent applications with the Patent and Trademark Office. The University of Colorado has such policies and practices in place and is able to obtain effective assignments from its inventors.

Rather, the Court’s decision in this case turned on the language of the assignment of future rights in the competing assignment documents at issue. The Court found Stanford’s “agree to assign” contract term deficient compared to the company’s “hereby do assign.” The dissenting opinion essentially called for litigants to bring a case which would allow a closer examination of the equitable rights in future inventions created by these phrases.

For more information about CU's intellectual property policies, visit the TTO website, or contact TTO.

Catherine Shea is Associate Counsel for Technology Transfer in TTO's system office.