[Ip-health] The MIT Tech: Stanford v. Roche at high court on Monday

Thiru Balasubramaniam thiru at keionline.org
Tue Mar 1 00:41:07 PST 2011


Stanford v. Roche at high court on Monday

February 25, 2011
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 Court on  

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.

—John A. Hawkinson


Thiru Balasubramaniam
Geneva Representative
Knowledge Ecology International (KEI)
thiru at keionline.org

Tel: +41 22 791 6727
Mobile: +41 76 508 0997

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