June 6, 2011
Statement of Stanford University about Supreme Court decision in Roche case
Stanford University respectfully disagrees with the decision of the United States Supreme Court issued today in Stanford University v. Roche, interpreting the Bayh-Dole Act, which governs title to patents that are invented with federal funding. As Justice Stephen Breyer stated in the dissenting opinion, the majority's ruling would allow an individual inventor at a university, nonprofit or small business to "assign an invention (produced by public funds) to a third party, thereby taking that invention out from under the Bayh-Dole Act's restrictions, conditions and allocation rules," and that is "inconsistent with the Act's basic purpose."
Both Stanford and the federal government argued that this result was not the intent of Bayh-Dole (as did Sen. Bayh in his amicus brief) and has many potential negative consequences for the federal government, which retains certain rights to inventions created with federal funding, for universities and others who create inventions with that funding and for companies that license the inventions. For example, the federal government could lose its many rights in the inventions, could lose the assurance that the royalties that would have gone to the university are used to further scientific research and education, and could lose the requirement that exclusive licensees will manufacture any products substantially in the United States.
"We are disappointed with the ruling by the Supreme Court in this case, but will move forward to protect the interests of all parties in inventions created with federal funding, including the interests of the federal government and companies that license technology from Stanford," said Stanford General Counsel Debra Zumwalt.