For 30 years, universities and private industry have cooperated to bring federally funded inventions to market under the rules of the Bayh-Dole Act. However, Stanford University's dispute with Roche Molecular Systems Inc., now before the U.S. Supreme Court, is calling those rules into question. The case, which was granted certiorari on Nov. 1, centers on whether inventors or federal contractors retain rights to inventions funded at least in part with federal dollars under Bayh-Dole, which was enacted to help ensure that such inventions are commercialized and made available to the public. Stanford, which claims it has rights under Bayh-Dole to certain HIV testing technology developed by one of its researchers, sued Roche for patent infringement in 2005, claiming Roche's HIV test kits infringed three of the university's patents. While companies that frequently partner with universities have long been careful to heed the requirements of Bayh-Dole, the dispute between Stanford and Roche is an important reminder to proceed with caution, said Brian Kacedon, partner at Finnegan. “If you're having someone work with your technology or for you at your facility and you want to own what they're doing, you have to make sure that it doesn't later get mingled with work they're doing under federal funds that would cloud whether the government has title to it,” Kacedon said.
