Bayh-ing for blood?

Leland Stanford Jr
Who owns an invention? Or should the question be who owns an inventor?  Via Stephen Brett (Anderson & Co.) comes latest news of a case which the AmeriKat spotted and wrote up on her Letter of 12 December 2010 (here and see earlier links too),  Board of Trustees of Leland Stanford Junior University v Roche Molecular Systems Inc.  Says Stephen:
"The Supreme Court is considering its decision after hearing oral argument on 28 February in Stanford v Roche. Stanford accuses Roche of patent infringement in relation to technology used in a blood test marketed by Roche. Roche says that it and not Stanford 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 contract 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. I suspect that it will fan the perennial debate as to who should own inventions created by academics in the course of their work. And it is also likely to lead many lawyers who advise universities to roll their eyes and wish that individual academics could somehow be prevented from signing anything, ever, until they have taken specific legal advice. 
Transcript of the oral hearing is on the US Supreme Court site, here".
The IPKat is a little saddened by all this. The patent in question relate for methods of testing the effectiveness of AIDS treatments by measuring the HIV concentration in blood plasma.  This seems a most commendable objective, which surely would have benefited if the money thrown into litigating this dispute had been devoted to the same ends as the research leading to the patents in the first place. Does anyone know how much this dispute has cost so far -- and how many sufferers from HIV/AIDS have benefited from it?

Merpel, sentimental to the last, gets all dewy-eyed over any tug-of-love, and this one's no exception ...
Bayh-ing for blood? Bayh-ing for blood? Reviewed by Jeremy on Monday, March 14, 2011 Rating: 5


  1. To Quote from another American legend (albeit a fictional one), Gordon Gecko:

    Greed is... good. Greed is right, greed works. Greed clarifies, cuts through, and captures the essence of the evolutionary spirit. Greed, in all of its forms; greed for life, for money, for love, knowledge has marked the upward surge of mankind.

  2. So, whose assignment has more long lasting effect - wish there is an angle left for public interest

  3. Litigation is a cost of doing business, as are the costs of accountants, patent attorneys, secretaries and snazzy swivel chairs. All of these costs take away from front line services of benefit to mankind (growing food, building shelter etc), however they are all necessary (unfortunately) to enable the proper functioning and advancements of society.

    This litigation will probably not have any negative effect on the access to this test so there is no reason to get too emotional about this one.

    If the litigation costs cause a price rise that makes the test unaffordable for some, then society can step in and ensure funding is made available.

  4. We need to take an objective view of patent litigation - yes it is sad that the money could have been spent on HIV/AIDS research. However, one could say that about any litigation, 'awwww, the money could have been used to save kittens with cancer', for example.

    There are many attorneys who advise their clients to steer clear of litigation where possible. There are also many, attorneys who would quite happily advise clients to sue their own mothers for a piece of the action...

  5. The difference being that in any actions against the mothers (for a piece of...) that preserve a patentee's rights and just rewards for labour spent, also provides the lifeblood for that (and additional) work that enables the very inventions in the first place.

    In other words - and in a slightly different analogy - without fighting for peace, there would be no peace. Perhaps you have heard of the phrase "Peace in our time" and the response; yes, but at what cost?


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