June 9, 2011
In a recent June 6, 2011 decision, the United States Supreme Court construed the Bayh-Dole Act in resolving issues related to ownership of intellectual property rights and held that the Bayh-Dole Act does not automatically vest title to federally funded inventions in federal contractors or authorize contractors to unilaterally take title to such inventions. Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 2011 WL 2175210. In describing the Bayh-Dole Act, the Court stated, “In 1980, Congress passed the Bayh–Dole Act to ‘promote the utilization of inventions arising from federally supported research,’ ‘promote collaboration between commercial concerns and nonprofit organizations,’ and ‘ensure that the Government obtains sufficient rights in federally supported inventions.” 35 U.S.C. § 200. To achieve these aims, the Act allocates rights in federally funded “subject invention[s]” between the Federal Government and federal contractors (“any person, small business firm, or nonprofit organization that is a party to a funding agreement”). §§ 201(e), (c), 202(a). The Act defines “subject invention” as “any invention of the contractor conceived or first actually reduced to practice in the performance of work under a funding agreement.” § 201(e).” You can see the text of the Bayh-Dole Act at PL 96-517.
The Bayh-Dole Act holds a particular significance for universities and is also known as the Bayh-Dole University and Small Business Patent Procedures Act. Technology commercialization has become a very important issue for universities, not only from the perspective of bringing inventions to benefit the public but also as an additional stream of revenue. The database ECKLICN, Eckstrom’s Licensing in Foreign and Domestic Operations, provides great guidance for university licensing issues. Try the following search in this database: PR,TI(LICENSING /5 UNIVERSITY).