Lectures & Articles

The Gold Seal of Ownership: Stanford v. Roche and Ownership of Federally Funded Research

Mary Hess Eliason

When an invention is conceived, it is generally presumed to be owned by the inventor under U.S. patent law. [1] The case of Stanford v. Roche demonstrates that this may not be true in the context of federally funded research. The issue being brought before the Supreme Court is whether, in the context of federally funded research, the ownership of the invention first arises with the federal contractor (i.e., Stanford) or with the inventor under the Bayh-Dole Act 35 U.S.C. §§ 200-212 and whether the inventor can interfere with that right by assigning the invention to a third party.[2]

The rest of this article can be read on the Patent Law Practice Center web site.

[1] See 35 U.S.C. § 101, “[w]hoever invents or discovers a new and useful [invention] may obta in a patent therefore,” 35 U.S.C. § 261, patent applications are “assignable in law by an instrument in writing,” see also 37 C.F.R. § 3.73(a) “The inventor is presumed to be the owner of a patent application, and any patent that may issue therefrom, unless there is an assignment.”
[2]The U.S. Supreme Court has accepted certiorari in Bd. of Trustees of Leland Stanford Jr. University v. Roche Molecular Systems, No. 09-1159 (Supreme Court 2010) filed based on the issue of “[w]hether a federal contractor university’s [Stanford’s] statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party [Roche].” Grant of Cert. November 1, 2010.