June 7, 2011
Stanford v. Roche: Inventorship Conflict Between Academy and Industry
A long-running dispute between Stanford University and Roche Diagnostics has centered on competing assignment documents that were signed by a Stanford research scientist, Mark Holodniy, who was employed at Stanford but who had gone over to Cetus Corp. to learn about then-developing techniques of polymerase chain reaction (PCR) DNA testing, a revolutionary advancement which allowed minute quantities of DNA to be tested and quantified. At stake in the patent litigation are the revenues derived from the development of a PCR-based blood test that measures HIV levels. Although Holodniy's employer-originted contract stipulated that inventions generated at the university would be assigned to Stanford ("agreed to assign), his subsequently executed contract with Cetus Corp. (predecessor to Roche) noted that his work at that site was immediately assigned ("will assign") to the corporation. The Supreme Court has decided in favor of Roche, disputing Stanford's assertion that the existing Bayh-Dole Act (allowing universities to claim patent rights over federally-funded inventions) automatically vested the patent rights in Stanford. This was clearly a case of somewhat conflicting assignments signed by an inventor who was legitimately dividing his work efforts between Stanford and Roche. The precision of the Roche assignment clearly favored the predominance of that document, as the Court spelled out. What's clear is that Bayh-Dole is certainly permissive of the scheme by which universities are allowed to exploit the federally funded-work through subsequent patenting; however, it is not a default mechanism in the absence of underlying documentation that explicitly transfers the rights of an inventor to the institution. What's also clear is that a the business relations governing the situation of a university-funded researcher who formally performs some research at a competing entity (whether academic or business) are no doubt less ambiguous and casually reviewed, as university tech transfer offices more carefully supervise the work efforts of employees and proactively attempt to avoid any casual or unsupervised contracting by employees which could defeat the expectations of the Bayh-Dole framework.