Stanford v. Roche: Should The Supreme Court Dismiss Certiorari As Improvidently Granted?

Intellectual Property Today
April 2011

The Stanford v. Roche case presents an opportunity for the Supreme Court to determine patent ownership rights of federally-funded inventions. Under the Bayh-Dole Act, “contractors” of the government, such as research universities, have the option to “retain title” for any inventions that result from research supported by federal money. But the Act is not clear regarding the power of inventors to assign their own rights to third parties prior to the contractor’s option of title. The Stanford case involves this factual situation and has generated much commentary regarding the scope of contractor rights and inventor rights. However, the article explores the possibility that the case may not be the best vehicle to resolve this important issue due to disputes over key facts. The article also presents a narrowly-tailored analysis on the merits that avoids the unresolved factual matters.

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