The US Supreme Court is considering its decision after hearing oral argument on 28th February in the case of Stanford v Roche. Stanford accuses Roche of patent infringement in relation to technology used in a blood test marketed by Roche. Roche says that Roche 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 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. Of course, the judgment is largely academic on this side of the Atlantic but I suspect that it will fan the perennial debate as to who should own inventions created by academics in the course of their work. It is a stark reminder to lawyers everywhere of the importance of accurate drafting and also of the risks that individuals run when they sign contracts without taking specific legal advice first.
Transcript of the oral hearing is on the US Supreme Court site, here:
This entry first appeared on the IPKat blog on 14th March 2011 and both it and some links to further comments on the case can be found here: