Who owns patents that are generated by federally funded research? Roche has just filed a brief in a case before the US Supreme Court in hopes of deciding the question. The drugmaker is fighting Stanford University, which sued Roche in 2005 for patent infringement over technology to detect HIV levels blood using PCR, the polymerase chain reaction,The Tech writes.
Roche claims it is a co-owner of the patent because one of the original researchers transferred his patent rights to Cetus, which the drugmaker later purchased. In its brief, Roche argues the Bayh-Dole Act "does not alter a co-inventor’s right to assign his shared interests in an invention" and that “despite numerous requests, Stanford has never produced the actual funding agreement with the federal government that allegedly bears upon the inventions at issue in this case.”
In its petition, Stanford asked the court to decide whether a university’s patent rights “can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.” Stanford has received some ideological support from the Association of American Universities, Wisconsin Alumni Research Foundation and Massachusetts Insititute of Technology, all of which have filed friend of the court briefs (see here, here and here). For these folks, the question they hope to have answered is the extent to which university patent rights are valid when government funding is involved.