Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., No. 09-01159, 2011 BL 147882 (U.S. June 6, 2011) In a 7-2 decision, the U.S. Supreme Court held that the University and Small Business Patent Procedures Act of 1980, 35 U.S.C. §§ 200-212, more commonly known as the Bayh-Dole Act, does not automatically transfer ownership of patented inventions created during the course of federally-funded research to the college, university, or other institution that contracted to perform the research. The Court cited the long-standing principle that inventors own their inventions and resulting patents, noting that although Congress has changed that rule in other statutes involving federally-sponsored research, it has not done so with respect to the Bayh-Dole Act. Accordingly, the Court reiterated that a contracting institution must obtain an effective assignment from the inventor in order for a patent to fall within the Bayh-Dole Act's requirements.
Dr. Holodniy's Research
Supreme Court Finds Bayh-Dole Act Silent on Transfer of Patent Title
Such language is notably absent from the Bayh–Dole Act. Nowhere in the Act is title expressly vested in contractors or anyone else; nowhere in the Act are inventors expressly deprived of their interest in federally funded inventions.
The Bayh–Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply assures contractors that they may keep title to whatever it is they already have. Such a provision makes sense in a statute specifying the respective rights and responsibilities of federal contractors and the Government.
It would be noteworthy enough for Congress to supplant one of the fundamental precepts of patent law and deprive inventors of rights in their own inventions. To do so under such unusual terms would be truly surprising. We are confident that if Congress had intended such a sea change in intellectual property rights it would have said so clearly—not obliquely through an ambiguous definition of "subject invention" and an idiosyncratic use of the word "retain."
Justice Breyer's Dissent
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