A dispute pitting a university against a biotech company over rights to a patent purportedly assigned to the company by the university researcher working on the technology was recently heard by the U.S. Supreme Court. Bd. of Trustees of Leland Stanford Junior Univ. v. Roche Molecular Sys., Inc., No. 09-1159 (U.S., argued February 28, 2011). Additional details about the litigation appear in Issue 2 of this Bulletin. According to news sources, the Court did not indicate when or how it would rule on the matter, although several justices apparently focused on minor differences in assignment language included in the contracts at issue.

Justice Samuel Alito reportedly noted that the university’s position, based on “retaining” rights to inventions it already possesses, runs counter to a basic patent law tenet, i.e., that inventors have initial title to their inventions. Within the context of the Bayh-Dole Act, he asked, “If the government was going to make such a huge change from normal patent law where the inventor owns his invention until he assigns it to his employer, why wasn’t that set forth clearly? All they needed was one paragraph.” The Court could issue its ruling before it adjourns at the end of June. See Law 360, February 28, 2011; Stanford Daily.com, March 1, 2011.