Patents; federal contractors
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.
Section 202(a), which states that contractors may “elect to retain title,” confirms that the Act does not vest title. Stanford reaches the opposite conclusion, but only because it reads “retain” to mean “acquire” and “receive.” That is certainly not the common meaning of “retain,” which is “to hold or continue to hold in possession or use.” You cannot retain something unless you already have it. And §210(a)—which provides that the Act “take[s] precedence over any other Act which would require a disposition of rights in subject inventions … that is inconsistent with” the Act—does not displace the basic principle that an inventor owns the rights to his invention. Only when an invention belongs to the contractor does the Bayh-Dole Act come into play. The Act’s disposition of rights does nothing more than clarify the order of priority of rights between the Federal Government and a federal contractor in a federally funded invention that already belongs to the contractor.
The Act’s isolated provisions dealing with inventors’ rights in subject inventions are consistent with the Court’s construction of the Act. See §202(d). That construction is also bolstered by the Act’s limited procedural protections, which expressly give contractors the right to challenge a Government-imposed impediment to retaining title to a subject invention, §202(b)(4), but do not provide similar protection for inventor and third-party rights.
583 F. 3d 832, affirmed.
09-1159 Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.
Roberts, C.J.; Sotomayor, J., concurring; Breyer, J., dissenting.