Daily Archives: November 24, 2010

Stanford v Roche; Ownership rights in federally funded inventions

The case of Stanford v Roche is a patent dispute over universities’ ownership of federally funded inventions — see extract in the text box below.  Victoria Henson-Apollonio who sent over the link said: 

“This is the sort of thing that we do need to worry about…. And, the CG doesn’t even have anything like Bayh-Dole that could be used as a basis to argue against the transfer of ownership!”

She went on to refer to certain agreements within the CGIAR system that have primarily have confidentiality provisions as their legal basis.

“Centers need to know about this case and to understand the risk that they may be taking on, by entering into such agreements without proper review.”

Practical steps suggested were to:

“(1) Review of all employment contracts for Centers that are involved in CRPs, especially the lead Centers, (2) Require that no confidentiality agreements be signed by any “CRP”-staff, again –especially the lead Center’s staff, without review and (3) Put together a practice note on confidentiality agreements, “Rights, risks, and responsibilities” 

Supreme Court Agrees to Decide Whether Universities’ Ownership Rights in Federally Funded Inventions Can Be Terminated Unilaterally By Individual Inventors

“The proper interpretation of the Bayh-Dole Act is the central question at issue in Stanford v. Roche. In 2005, Stanford University sued Roche Molecular Systems for allegedly infringing Stanford’s patents relating to methods for evaluating the efficacy of anti-HIV therapies, which Stanford had developed using federal funds. Roche claimed that Stanford could not sue to enforce the patents because one of Stanford’s faculty inventors had signed, while using a Roche lab, a visitor confidentiality agreement that purported to grant ownership rights in any invention that might result from work at the lab, supposedly leaving Stanford without full title to the patents. Stanford responded that it fully owned the patents under the terms of the Bayh-Dole Act, since Stanford researchers conceived the invention in the course of research using federal funds, and the Act grants universities and other non-profits the right to assume ownership in federally funded research, subject to certain restrictions and obligations designed to protect the government’s interest. The district court agreed.


The U.S. Court of Appeals for the Federal Circuit held, however, that the visitor confidentiality agreement transferred the Stanford researcher’s interest in the invention to Roche. The Federal Circuit held that the Bayh-Dole Act did not prevent the faculty inventor from unilaterally assigning ownership rights to a third party and thereby defeating Stanford’s statutory right to take ownership.” (Emphasis added)


For more analysis on the Stanford v Roche case see:

Supreme Court to hear Bayh-Dole Patent Ownership Dispute: Stanford v. Roche” 

Supreme Court to Take Up Stanford v. Roche