Supreme Court Says Bayh-Dole Act Does Not Trump Individual Inventors' Patent Rights

In 7-2 vote, the Supreme Court ruled on a dispute over patents on HIV technology in favor of Roche and rejecting Stanford Universities claim that Bayh-Dole automatically vested patent title to universities and other contractors. Instead, the Court stated that Bayh-Dole was limited to the relationship between the federal government and the contractor and could not be used to preempt the inventor’s rights. Quoting Finnegan partner Brian Kacedon, “The law has been pretty well settled since FilmTec,” questioning the dissent's view. “Most everybody getting federal funds would know to use the ‘do hereby assign' language today.” However, Kacedon was surprised that the two dissenters and Sotomayor appeared to call for a challenge to the FilmTec holding, and stated “It will be interesting to see if it comes up in a case appealed to the Federal Circuit.”