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Stanford v Roche decision requires greater diligence

August 31, 2011

By Igor V. Timofeyev

On 6 June 2011, the US Supreme Court rendered a long-awaited decision clarifying the ownership rights in inventions funded by grants from the US federal government. The decision Board of Trustees of the Leland Stanford Junior University v Roche Molecular Systems, Inc, 131 S Ct 2188 (2011) is the first time the US highest court examined the Bayh-Dole Act, 35 USC §§ 200-212 a 30-year-old federal law that governs the allocation of these rights among individual inventors, research institutions receiving government grants, and the federal government.

The Supreme Court held that the Bayh-Dole Act does not alter the long-standing principle of US patent law that a third party may acquire a right to an invention only through an assignment by the inventor. By reaffirming this principle, the Supreme Court chose the course of action that effects little, if any, change in the existing law. Nevertheless, the decision will require research institutions and, particularly, universities that receive government grants to examine carefully the employment agreements with their researchers, in order to ensure that these agreements effect an immediate assignment of all future patent ownership rights to the institution.

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Image: Igor V Timofeyev
Igor V Timofeyev
Partner, Litigation Department