A little while ago, Chris Torrero kindly sent me this link to
this interesting piece from Genome Web News entitled "US Supreme Court to Hear Case on Universities' IP Rights on Federally Funded Research". It touches on the much-admired US Bayh-Dole legislation and reads, in relevant part,
"The US Supreme Court ... agreed to review a case over who owns the rights to discoveries paid for with government funding. The case involves Stanford University, which sued Roche in 2005 alleging it infringed on three patents covering PCR technologies. The technologies were developed by Mark Holodniy and others and are directed at measuring HIV viral loads.
[explanation of the facts and history of the litigation omitted]
In appealing to the Supreme Court, Stanford argued that Bayh-Dole supersedes an individual's rights to grant ownership to an invention. The Obama Administration agrees and is siding with the university. In a brief to the Supreme Court, it said that the appeals court "erred in holding that an individual inventor may contract around the Bayh-Dole Act's framework for allocating ownership of federally funded inventions." The Bayh-Dole Act gives ownership over an invention to a contractor, in this case, the research institution, and an individual inventor may "obtain title in a federally funded invention" only if the contractor declines to claim ownership, which Stanford did not, the administration said in its amicus brief.
... the case has broad implications for federally funded research and the government's role in supporting such research and making them available for the public good.
"The Bayh-Dole Act reflects Congress' considered judgment about the best way to ensure that federally funded inventions are made available to the public and to encourage further science and technology research and development in the United States," the administration said. "The funds at issue are substantial: the federal government spends billions of dollars per year on science and technology research at United States colleges and universities, small businesses, and nonprofit organizations.
"By upending the Bayh-Dole Act's hierarchy of rights, the court of appeals necessarily made the government's rights, like the contractor's rights, depend on the actions of an individual inventor," it said.
The "Policy and objective" provision of Bayh-Dole read as follows:
"§ 200 It is the policy and objective of the Congress to use the patent system to promote the utilization of inventions arising from federally supported research or development; to encourage maximum participation of small business firms in federally supported research and development efforts; to promote collaboration between commercial concerns and nonprofit organizations, including universities; to ensure that inventions made by nonprofit organizations and small business firms are used in a manner to promote free competition and enterprise without unduly encumbering future research and discovery; to promote the commercialization and public availability of inventions made in the United States by United States industry and labor; to ensure that the Government obtains sufficient rights in federally supported inventions to meet the needs of the Government and protect the public against nonuse or unreasonable use of inventions; and to minimize the costs of administering policies in this area".
The Act reflects "the best way to ensure that federally funded inventions are made available to the public and to encourage further science and technology research and development in the United States", but surely what it was intended to do was to free up publicly funded innovations so that they could be turned into wealth-creating assets by the private sector, not to determine the subsequent course that the private sector activity takes? Comments, please.
