The Supreme Court on June 6, 2011 rejected Stanford University's argument that it owned important patents. See, Stanford v. Roche, 563 U. S. ____ (2011). This case is complicated and subtly important, as noted in my prior blogs from December 11 and November 1, 2010. The impact will be felt for all high technology including cleantech and nanotech, as well as life sciences.

The trouble arose, in essence, when Stanford started working with Roche on PCR technology, and conflicting contractual claims to patent ownership arose. In the modern economy, university patenting is vital to innovation, and university-corporate cooperation and partnering is even more vital to innovation. The Bayh-Dole system, now 30 years old, helps control the patent title and licensing issues at play for government funded inventions which are licensed to the private sector. In this ruling, Stanford lost despite its assertion that the Bayh-Dole Act provided it with patent title despite competing contractual claims from Roche. In resolving the issue, the Supreme Court analyzed the issue cautiously and narrowly and did not pursue a more aggressive, creative policy approach in favor of Stanford.

The case is also important because the Supreme Court flatly rejected the Amicus Curiae filed by the Solicitor General's office in supporting Stanford's position. In the brief, the Solicitor General argued that Stanford's position was supporting the purposes of the Bayh-Dole Act. Hence, Congress (with Presidential blessing) now faces the option to amend the Bayh-Dole Act to better control the types of situations that can arise as Stanford found itself in. Allegedly, this would better align the words of the statute with the purpose.

In the meantime, universities and similar institutions will need to be ever vigilant about their assignment contracts until such amendment to Bayh-Dole is passed. Technicalities can count in patent assignment.

The decision was 7-2 with Breyer and Ginsburg dissenting. Also of note was the dissent's reference to prior Federal Circuit FilmTec caselaw which was deemed an alternative angle for parties situated like Stanford to argue for in future litigation. However, the FilmTec line of argument was not pursued here. It may arise in future litigation.

Ironically, in 2004, I had drafted a short article called "Government Rights in Nanotechnology IP: Remembering FilmTech and CellPro Before it is Too Late."

See: http://www.foley.com/files/tbl_s31Publications/FileUpload137/2040/112019%20-%20Nanotech%20WhitePaperbody.pdf

Agreed... seven years later, it is time to remember FilmTec. But that may be too late for this Stanford case? Note: in the context of this blog, FilmTec related to nanotech filtration membranes for water treatment.