Today the Supreme Court decided Board of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Systems, Inc. The Court held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. The Court thus affirmed the Federal Circuit's holding that Roche held title to the patents in suit because of a written agreement a Stanford researcher had signed with Cetus (Roche's predecessor), and that Stanford did not acquire title under the Bayh-Dole Act.
This makes two rare Supreme Court affirmances of the Federal Circuit in one week (although Global-Tech was only an affirmance in the result, not the reasoning).
UPDATE: Here's Patently-O's discussion of the case.
This makes two rare Supreme Court affirmances of the Federal Circuit in one week (although Global-Tech was only an affirmance in the result, not the reasoning).
UPDATE: Here's Patently-O's discussion of the case.
This case underscores the vast differences between copyright and patent law; particularly considering the federal-funding angle, I somewhat expected the Court to rule in favor of the employer. Anyway, this patent litigation should serve as a lesson (especially to universities) that it's not always enough to reduce agreements to writing; you also have to make sure that such agreements are legally airtight.
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