[Ip-health] The MIT Tech: Stanford v. Roche at high court on Monday
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
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
Knowledge Ecology International (KEI)
thiru at keionline.org
Tel: +41 22 791 6727
Mobile: +41 76 508 0997
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