Law School Case Brief
Bd. of Trs. of the Leland Stanford Junior Univ. v. Roche Molecular Sys. - 563 U.S. 776
In 1980, Congress passed the Bayh-Dole Act to promote the utilization of inventions arising from federally supported research, promote collaboration between commercial concerns and nonprofit organizations, and ensure that the Government obtains sufficient rights in federally supported inventions. 35 U.S.C.S. § 200. To achieve these aims, the Act allocates rights in federally funded "subject inventions" between the Federal Government and federal contractors (any person, small business firm, or nonprofit organization that is a party to a funding agreement). 35 U.S.C.S. § 201(e), (c), 202(a). The Act defines "subject invention" as any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement. 35 U.S.C.S. § 201(e).
Petitioner Stanford University sued respondent research company. Respondent argued that it co-owned a patent based on a professor inventor's assignment, so the university lacked standing. The district court held the professor had no rights to assign, as the university's research was federally funded, giving it superior rights under the Bayh-Dole Act. On appeal, the U.S. Court of Appeals for the Federal Circuit remanded for dismissal. Stanford's petition for certiorari review was granted.
Does the inventor lose the right to assign his invention for the reason that the research is federally funded?
The ruling of the appellate court was affirmed. The Bayh-Dole Act did not displace the norm that rights in an invention belonged to the inventor. It did not automatically vest title to federally funded inventions in federal contractors. Construing "invention of the contractor" to those owned by or belonging to the contractor made the phrase meaningful. And "invention owned by the contractor" or "invention belonging to the contractor" were natural readings of the phrase "invention of the contractor."
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