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Bayh-ing for blood?

By Johanna Gibson, David Pearce, Jeremy Phillips and Ilanah Simon.

Leland Stanford Jr

Who owns an invention? Or should the question be who owns an inventor?  Via Stephen Brett (Anderson & Co.) comes latest news of a case which the AmeriKat spotted and wrote up on her Letter of 12 December 2010 (here and see earlier links too),  Board of Trustees of Leland Stanford Junior University v Roche Molecular Systems Inc.  Says Stephen:

"The Supreme Court is considering its decision after hearing oral argument on 28 February in Stanford v Roche. Stanford accuses Roche of patent infringement in relation to technology used in a blood test marketed by Roche. Roche says that it and not Stanford owns the patents covering the kit. The history is that one of Stanford?s academics worked with Cetus Corp in developing the technology. At the time, the academic signed an assignment agreement with Cetus. Roche subsequently acquired Cetus and the patents. Stanford argues that the academic had signed an earlier assignment agreement with Stanford when he joined Stanford. The Supreme Court is asked to consider whether an individual can unilaterally override the effect of the Bayh-Dole Act.

Argument before the Supreme Court considered the point that the Stanford agreement was drafted as an agreement to make an assignment in the future whereas the Cetus contract was drafted as a present assignment. Roche also argued that it is fundamental in US law that an invention is owned by the inventor until the inventor takes steps to assign it away. The academic, Roche claims, had taken those steps by signing the Cetus agreement. 

There is no date that I know of for the Court?s judgment but apparently it is likely to be in June. I suspect that it will fan the perennial debate as to who should own inventions created by academics in the course of their work. And it is also likely to lead many lawyers who advise universities to roll their eyes and wish that individual academics could somehow be prevented from signing anything, ever, until they have taken specific legal advice. 

Transcript of the oral hearing is on the US Supreme Court site, here".

The IPKat is a little saddened by all this. The patent in question relate for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma.  This seems a most commendable objective, which surely would have benefited if the money thrown into litigating this dispute had been devoted to the same ends as the research leading to the patents in the first place. Does anyone know how much this dispute has cost so far -- and how many sufferers from HIV/AIDS have benefited from it?

Merpel, sentimental to the last, gets all dewy-eyed over any tug-of-love, and this one's no exception ...

Full post as published by IPKat on March 14, 2011 (boomark / email).