In the United States, the Bayh-Dole Act vests patent rights from federally funded research in the university where the research is carried out, rather than in the individual researchers.  This, until a recent U.S. Supreme Court ruling, gave universities legal certainty about the ownership of patents.

The case before the Court involved a dispute between Stanford University and Roche over patents for testing kits to detect HIV virus. A Stanford researcher who visited Roche to further his research had signed a confidentiality agreement which contained a clause assigning to Roche the rights in any patents developed whilst at Roche using the wording “I do hereby assign to Roche”.   The researcher went on to discover a method of testing for the HIV virus.  The Supreme Court ruled that clause in the Roche agreement prevailed over the “I agree to assign to Stanford” language in the researcher’s agreement with the university.  Roche and Stanford were therefore held to be co-owners of the patent and Stanford could not sue Roche for manufacture and sales of the kit.

This is an interesting illustration about how the wording in an agreement between a researcher and a university can be overridden by the researcher assigning his rights to a third party.  In the UK, universities own inventions produced by their employees if the course of their employment includes research.  Should the UK courts follow their US counterparts, it may be possible that researchers could inadvertently assign their rights, for example through wording in funding agreements.  Universities may also wish to review agreements it has with researchers who are not employees of the university, for example PhD students, to ensure that these do not allow the assignment of inventions which were made during the course of research at the university.