ACE Joins Amicus Brief in Stanford University Patent Rights
Case
Nov. 19, 2009
The American Council on Education (ACE) joined with a coalition of
higher education and research groups last week to submit an amicus
brief in support of Stanford University in a case that could have
serious ramifications for university ownership of patents stemming from
federally funded research.
The case, Stanford University v. Roche Molecular Systems,
focuses on the interpretation and application of the Bayh-Dole Act of 1980—also known as the
University and Small Business Patent Procedures Act—to
intellectual property arising from federal government-funded research.
Among other things, the Bayh-Dole Act gives U.S. universities, small
businesses and nonprofits rights to their inventions and other
intellectual property that results from such funding.
Stanford originally filed the suit charging patent
infringement against Roche in the Northern District Court of
California in 2005. Under dispute were three patents obtained by several
Stanford researchers resulting from work funded by the National
Institutes of Health. One of the researchers had signed an agreement to
assign rights to one of the patents to Cetus, a Roche-owned company.
Because the agreement with Cetus took effect immediately at the point
the invention was developed, the researcher was unable to assign his
ownership rights to Stanford, although the university had notified the
government that it elected to retain title to the patents.
The district court ruled in favor of Stanford, based in part on the
Bayh-Dole Act. Roche then appealed to the U.S. Court of Appeals for the
Federal Circuit, which overturned the lower court’s decision.
Stanford has now petitioned for a rehearing, arguing that the federal
circuit court’s ruling creates an untenable ambiguity about the
university’s automatic right to the ownership interest in the
patents.
The Wisconsin Alumni Research Foundation (WARF) spearheaded the
amicus brief, which was signed by several members of the Higher
Education Patent Reform Coalition (ACE, the Association of American
Medical Colleges, the Association of University Technology Managers and
the Council on Government Relations) and various universities and
university foundations engaged in significant federally funded
research.
"We felt it was important to give the federal circuit court, which
hears all appeals in patent cases throughout the nation, a view of
higher education's reliance upon the Bayh-Dole Act," said Ada Meloy,
ACE's general counsel. "The background of the passage of Bayh-Dole
in 1980, and the flourishing of research that followed, makes this issue
of vital importance to institutions of higher education as well as to
scientific innovation and the economic growth of the country."
 Amicus Brief to the U.S. Court of
Appeals for the Federal Circuit in Support of Stanford University in
Stanford v. Roche (1,161 KB)
Also see:
Painful Lesson on Patents
Inside Higher Ed (Oct. 2, 2009)
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