The Supreme Court began hearing oral arguments for Stanford v. Roche on Monday.
According to a Chronicle of Higher Education article, the case would strike down the Bayh-Dole Act, a federal law that gives universities the patents for faculty inventions and academic research.
A 1999 Council on Governmental Relations report stated that prior to Bayh-Dole, the government had serious trouble with moving government-funded technology into the private sector.
“In 1980, the federal government held title to approximately 28,000 patents. Fewer than 5% of these were licensed to industry for development of commercial products,” it says.
The problem: government policy regulating the ownership of new inventions were unattractive to private companies — they made them available only through “non-exclusive” licenses, so that any other company might acquire and use the technology as well.
Eventually they determined that it was in the greater interest to change the policy — and presto — the Bayh-Dole Act was born.
The success of the legislation is evident in the amount of new technologies “successfully introduced into public use,” the report surmises.
Now, the Stanford v. Roche case will determine how much control the Bayh-Dole Act should give to the inventor and the university.
According to The Chronicle, the case arose when Stanford University sued Roche Molecular Systems Inc., a major pharmaceutical company in Switzerland, for patent infringement.
Dr. Mark Holodniy, a Stanford AIDS researcher, signed agreements with both Stanford and Cetus, a biotechnology company he contracted with in 1989.
After Holodniy published his findings, Stanford acquired the rights through the Bayh-Dole Act. However, Roche Molecular Systems decided to claim the rights to Holodniv’s work through his contract with Cetus, refusing to pay Stanford any money for the patent.
So the real question, which Stanford and many other institutions are asking, is: did Holodniy have the right to sign the agreement with Cetus in the first place? And is that contract still valid or in conflict with his one with Stanford?
The implications of this case boil down to much more than a simple patent infringement — it disputes the valid agency of all university professors, like Holodniy, who invent invaluable technological resources with the support of federal funding.
Yes, as the American Association of University Professors note, “faculty members are more than mere employees 'hired to invent.'”
But they are also bound to the obligations that come with federal funding: they have a duty to the taxpayers who make their research a reality.
If the Supreme Court decides that professors do indeed have that agency, then according to The Chronicle, “[S]ome 80 research universities, along with the Association of American Universities, the American Association for the Advancement of Science, and a half-dozen other higher-education and research associations” along with the White House, worry that it will deeply undercut the productive status quo of the Bayh-Dole Act.
But while their legal arguments remain ambiguously accurate, at least schools can take heart in the fact that their fates rest in the hands of perhaps their greatest ally.
After all, the Supreme Court has a knack for manufacturing brilliant constitutional interpretations for cases with ethical implications like Stanford v. Roche.
Contact Danny at djoconn1@asu.edu
