It is easy to imagine the days that Mark Holodniy signed the papers. First he was a new hire at a university, perhaps presented with a thick stack of boring paperwork before he could get started. Then he was collaborator, likely eager to try a few experiments at a nearby company.
On both of those days, Mark Holodniy signed away the patent rights to certain inventions that he made – first to Stanford University, then to Cetus, a biotechnology company that has since been bought by Roche.
They are forms that many researchers sign without a second thought. Now they are the subjects of a US Supreme Court case that many universities fear could limit their patent rights.
Today, the Supreme Court heard lawyers for Stanford and Roche argue why their clients deserved the rights to patents covering a method used to quantify the amount of HIV in blood samples. Holodniy developed the test while at Stanford, Stanford argues, and used federal funds to do so. That would mean the rights to the test fall to Stanford thanks both to the form Holodniy signed and the Bayh-Dole Act, which says that universities can license federally funded inventions.
Not so, says Roche: Holodniy developed part of the test in the laboratories at Cetus. And when he entered those laboratories as a collaborator, he signed a form giving Cetus the rights to any discoveries made as a result of the collaboration.
The last court to hear the case sided with Roche based on the wording of those two forms. Stanford’s form said “I will assign” patent rights to Stanford. Roche’s form said “I hereby do assign” rights to Cetus. Although Stanford’s form was signed first, the Court of Appeals for the Federal Circuit decided that Cetus’s form conveyed the patent rights immediately, whereas Stanford’s conveyed the patent rights at some vague point in the future.
The Supreme Court circled back to this argument repeatedly today, with several justices expressing agreement that Stanford simply had a bad licensing agreement. But Stanford has tried to make a broader argument that as a federally funded Stanford employee, Holodniy didn’t have the power to transfer the title of his inventions to someone else because it already belonged to Stanford. It is in the interest of the United States, argued Donald Ayer on behalf of Stanford, to have the fruits of the research it funds “go where Congress said it should go” under the Bayh-Dole Act.
The court will likely decide the case before the current session ends in June.
Image: US Supreme Court