Publication Title

Intellectual Property Journal


Bayh-Dole Act, commercialization, Stanford v. Roche, universities

Document Type



The discovery and commercialization of biotechnology innovations often rely on collaborations between universities and for-profit firms. In the United States, the federal government funds much of university life sciences research and, under the Bayh-Dole Act, has some rights to research arising from that funding.

Two important strands of invention ownership issues in this web of collaboration arose under litigation that culminated in the recent United States Supreme Court decision Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc. (“Stanford v. Roche” or “Stanford”). The first is the question of whether Bayh-Dole trumps any other invention assignment agreements when federal funding was used in any part for the invention. The second is whether a 1991 development in the case law of the United States Court of Appeals for the Federal Circuit (the “Federal Circuit”) regarding invention assignments is binding federal common law.

While the Supreme Court limited itself to the first question—because the petition for certiorari was so limited—some of the justices addressed the second in a concurrence and a dissent. This article discusses both strands, while paying particular attention to the emerging battle over the Federal Circuit’s “federal common law” of assignments.

Part I reviews the facts of the case. Part II delves into the Bayh-Dole issues. Part III concludes the article by analyzing the Federal Circuit’s federal common law of assignments and addressing the open issues which may result in a Supreme Court challenge next year.

Note: Reproduced by permission of Thomson Reuters Canada Limited.



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