According to GenomeWeb Daily News, the Supreme Court ruled that Stanford University does not have a claim to PCR technology-related patents that it said Roche Molecular Systems has infringed.
The decision will serve to clarify the domain of the 1980 Bayh-Dole Act and will mean that going forward, it is likely that universities seeking to retain rights to patents from their employees will need to have an agreement that assigns the school those rights.
In a 7-2 decision, the court sided with Roche, saying that just because university-based research may have been funded by federal dollars, it does not override more than 200 years of patent law and take away the rights to a patent from its inventor, as Stanford had argued.
In the 2005 lawsuit, which Stanford said could have "a significant impact on research universities across the country," the university claimed that Roche has been infringing three patents and said that it filed the suit only after years of attempting to get the company to license the IP.
The school claims that one of its AIDS researchers, Professor Mark Holodniy, developed the patented process with federal funding and that while collaborating with a company called Cetus, which was developing PCR technology and later sold those assets to Roche, he gave away the rights to the patents resulting from the collaboration.
The Supreme Court decision also waves off the position held by the Obama Administration, which took Stanford's side, and had argued in a brief that the Bayh-Dole Act gives a federally-funded contractor rights to IP over that of the inventor.
"The funds at issue are substantial: the federal government spends billions of dollars per year on science and technology research at United States colleges and universities, small businesses, and nonprofit organizations," the Obama Administration said in its brief.
"By upending the Bayh-Dole Act's hierarchy of rights, the court of appeals necessarily made the government's rights, like the contractor's rights, depend on the actions of an individual inventor," the administration had argued.
The Bayh-Dole Act was passed in part to support the transfer of new technologies from universities and into new businesses and innovations, but also to keep the taxpayers from paying for the same research twice – once through the grant and again when paying for the intellectual property.
The ruling upholds that of a 2009 judgment by the Court of Appeals for the Federal Circuit, which agreed with Roche that it owned the rights to all the patents because Holodniy had only an uncertain, future-looking agreement with Stanford, which gave precedent to the more definitive agreement he signed with Cetus.
"Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not," Chief Justice John Roberts wrote in his decision. "Under the law in its current form, "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter...may obtain a patent therefor."