Stanford v. Roche Decision Blurs Terms of IP Ownership

This week, the U.S. Supreme Court ruled 7-to-2 in favor of Roche Holding AG in the case of Stanford v. Roche Molecular Systems. The suit pertained to a dispute over ownership of intellectual property for methods of testing the effectiveness of an H.I.V. treatment.

Mark Holodniy, the principle investigator in this case, had transferred rights to the invention to a private company, Cetus Corporation, which acted as a collaborator with Stanford University on the research. Later, Roche acquired the line of business from Cetus. Stanford was issued three patents based on the invention, which Roche later disputed. The suit claims Holodniy was under a contract through his employment at Stanford that transferred his patent rights to the institution.

The court’s decision was made primarily based on the wording of Holodniy’s contract with Stanford, and supported the inventor’s individual right to the IP. The decision has raised questions about a university’s right to retain ownership of inventions that result from federally funded research, granted to them by the Bayh-Dole Act of 1980.