09-1159 Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc.

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Intellectual Property
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.

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