Memo to university tech transfer offices: Review contracts.
From The Washington Post:
Chief Justice John G. Roberts Jr. said that a 1980 federal statute allocating patent rights involving federally funded research did not change that basic tenet. And so Stanford University does not fully own patents that led to the development of a widely used human immunodeficiency virus (HIV) test, the court ruled in a 7 to 2 decision.
Stanford researchers had worked with a private company on a technique to measure the amount of HIV in a person’s blood, which led to a test kit marketed by Roche Molecular Systems.
The case was closely watched by universities, private research and development companies and the federal government, which often jointly conduct research…
The Stanford case involved a university researcher, Mark Holodniy, and a California biotech company called Cetus. In the 1980s, the company developed a technique — polymerase chain reaction, or PCR — that allowed billions of copies of DNA sequences to be made from a small sample of blood.
Click here for a PDF of the ruling.
The case puts university tech managers and the biotech indsutry at odds with each other. Click here for indsutry brief in support of Roche.
The response of the Association of University Technology Managers to the ruling? Every thing’s cool. Or, as they say inside the beltline — No permanent enemies, no permanent friends.
From the AUTM/BIO joint statement, which basically says — we’re still pals.
Although BIO and the undersigned higher education associations held different views on theStanford v. Roche case, the organizations are united in the desire to ensure that the U.S.technology transfer system continues to generate these public benefits… We are committed to working together in light of the Supreme Court’s decision to ensure the continued vibrancy of public-private partnerships and success of our shared objectives.
More on the case from a group called IPA advocate, which aims to protect university-based “inventors right” in the tech transfer process.
Sometimes it’s a matter of a single word. The site notes that MIT changed its own contract language in its Inventions and Proprietary Information Agreements from: “I hereby assign…” to “I agree to assign.” The university made the move to protect its rights after an earlier ruling in the case.