Invention Protection Upheld in Spite of Bayh-Dole Act: A Legal Reading List

“Because all ownership rights stem initially from the inventor, even in the case of federally funded research, the inventor’s ownership rights trump the Bayh-Dole vesting provision…”

The U.S. Supreme Court recently gave employee/inventor patent owners a boost in their Board of Trustees of the Leland Stanford Jr. University v. Roche Molecular Systems decision.

Here’s what law firms on JD Supra are writing about the June 6, 2011 SCOTUS decision:

Supreme Court Holds Bayh-Dole Act Does Not Grant Contractors Patent Ownership Rights to Federally Funded Inventions (By: Morrison & Foerster LLP)

“The Supreme Court’s decision in Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. No. 09-1159, rejected the arguments of Stanford University and the United States that the Bayh-Dole Act vested title to federally funded inventions with the eligible federal contractor (e.g., universities, non-profit organizations, or small businesses). The Supreme Court instead held that the Bayh-Dole Act permits contractors only to retain title to patents that they already possessed through other means, such as assignment provisions in employment contracts with the inventors.” Read more »

Supreme Court: Bayh-Dole Act Does Not Eclipse Inventor’s Rights (By:Bracewell & Giuliani LLP)

“‘Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not…[U]nless there is an agreement to the contrary, an employer does not have rights to an invention which is the original conception of the employee alone.’ This rings true even when the Federal Government is footing the bill.” Read more »

IP Update – A Summary of the Supreme Court’s Stanford v. Roche Molecular Systems, Inc. Decision (By:Finnegan)

“This week, the Supreme Court issued its decision in Stanford v. Roche Molecular Systems, Inc., holding that the Bayh-Dole Act, which allows federal contractors to “elect to retain title” to patents developed with federal money, does not automatically vest contractors with patent rights to federally funded inventions or otherwise authorize contractors to unilaterally take title to such inventions.” Read more »

Supreme Court Rules That Federally Funded Inventions Are Not Automatically Owned by Universities (By: Duane Morris LLP)

“The Court reasoned that the Bayh-Dole Act’s (the “Act”) provision that contractors may “elect to retain title” confirms that the Act does not vest title. In addition, the Court held that the provisions of the Bayh-Doyle Act do not usurp the inventor’s rights in favor of the “contractor” and the Act is triggered only when the contractor obtains the rights to an invention.” Read more »

Even Under Bayh-Dole, Employee Inventor Has First Dibs (By: McDermott Will & Emery)

“The Supreme Court of the United States recently delivered a blow to the university technology transfer world by holding 7-2 that federal contractors do not have an automatic right to claim title to inventions. Because all ownership rights stem initially from the inventor, even in the case of federally funded research, the inventor’s ownership rights trump the Bayh-Dole vesting provision.” Read more »

U.S. Supreme Court Holds the Bayh-Dole Act Only Lets Employers Keep What They Already Have (Davis Wright Tremaine LLP)

The Bayh-Dole Act merely allows the contractor to retain rights that were obtained from the inventor(s) under an assignment agreement or other applicable law. Unless such an assignment is procured or another law conveys title to the contractor, the inventor retains ownership of the invention. Read more »