From the Chronicle of Higher Education June 6, 2011
By Eric Kelderman
Washington
The Supreme Court ruled on Monday against Stanford University in a case that is viewed as a victory for faculty members and private companies involved in technology transfer and research partnerships. The ruling was also a warning to universities to carefully check the language and grammar of the contracts they sign with researchers.
A seven-member majority of the justices decided that neither institutions that receive federal research grants nor the government itself has an automatic right to patents or inventions that may result from federally financed research.
…… Chief Justice John G. Roberts Jr., writing for the majority, said Stanford’s interepretation of the Bayh-Dole Act would have given patent rights to a university “even if the invention was conceived before the inventor became an employee, so long as the invention’s reduction to practice was supported by federal funding. It also suggests that the school would obtain title were even one dollar of federal funding applied toward an invention’s conception or reduction to practice.”……By letting that distinction stand, the Supreme Court has muddied the waters for universities looking for guidance on writing those kinds of contracts, said Douglas Hallward-Dreimeir, a lawyer with Ropes & Gray who wrote a brief supporting Stanford on behalf of the Association of American Universities. “There’s always a chance when you think that you have the right assignment language that someone comes up with something better,” he said.