Supreme Court accepts Stanford / Roche case
The US Supreme Court will decide on the ownership of patents for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma, it announced on November 1.
The university filed a petition with the court in March, attempting to overturn a decision on the issue made by the Court of Appeals for the Federal Circuit. The decision was in favour of Roche Group’s diagnostic and molecular businesses.
Stanford argues that, under the Bayh-Dole Act, which concerns patent rights in inventions made with federal assistance, its rights supersede those of Roche.
In its petition, the university asks “[w]hether a federal contractor university’s statutory right under the Bayh-Dole Act...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”.
The patents-in-suit were filed by Stanford University. When they created the invention, Stanford’s scientists were contracted to “promise to assign rights”.
But one of the scientists, Professor Mark Holodniy, had already assigned his rights to future inventions to Cetus Corporation, a molecular diagnostics business, which later became a part of Roche.
The US Department of Justice (DOJ) has filed an amicus brief in the Supreme Court, supporting Stanford in its suit against Roche and requesting that the court hear Stanford’s “important question”.
The DOJ brief said: “Holodniy had no patent rights to assign to Cetus because title to the inventions initially vested in Stanford and Stanford exercised its Bayh-Dole Act rights. The Court of Appeals’ decision—which holds that Holodniy’s assignment to Cetus limited the patent rights that Stanford could assert under the Bayh-Dole Act—turns the act’s framework on its head.”
