Patent licensing is complicated, and a new chapter
of that complexity, as it applies to universities and other federal contractors
through the Bayh-Dole Technology Transfer Act,
will hit the Supreme Courton Monday.
The court will hear oral argument in Stanford v. Roche, the case that MIT
had submitted an amicus curiae (friend-of-the-court) brief in last year.
MIT supported Stanford.
Solicitor General Neal Kumar Katyal will also
present argument in support of Stanford’s case before the court on Monday.
Katyal has also filed an amicus brief
supporting Stanford.
The case revolves around whether a Stanford AIDS researcher, Mark Holodniy,
was able to sign away Stanford’s patent rights to a PCR- based AIDS assay when he signed a Visitor’s Confidentiality
Agreement while serving as a visiting scientist at Cetus, a local
biotechnology company later purchased by Roche.
Stanford argues that Holodniy’s ability to sign away Stanford’s rights is
constrained by the Bayh-Dole Act, a 1980 statute
that changed the way federally-funded inventions could be privatized. Prior
to Bayh-Dole, the process by which inventions arising from federally
funded research was unclear, complicated, and different for each agency.
Bayh-Dole set up a more efficient process for technology transfer to private
industry.
Roche argues that Holodniy’s signed statement that “I do hereby assign”
his work changed the way those rights transfer.
Columbia University Law Professor Ronald J. Mann,
writing on SCOTUSblog, predicts that the
language of the Patent Act will factor against Stanford strongly, and that
the Solicitor General will face “a tough
time” at oral argument. The Patent Act gives patent rights to human
inventors, not to companies, and the Bayh-Dole Act concerns applications
to government contractors, not to people.
In addition to the briefs from the parties in the case, there have been
numerous amicus briefs, including 13 at the
current stage of argument. When The Tech reviewed the eight briefs
available in early January, they were all in favor of Stanford side.
Several of the amicus briefs since filed are on Roche’s side, and in his
analysis, Mann suggests that the case could easily go either way.
