The Massachusetts Institute of Technology is urging the U.S. Supreme Court to review an IP case that MIT says could have an adverse impact on the nation’s well-established success under the Bayh-Dole Act. MIT’s Office of the General Counsel filed an amicus curiae, or “friend of the court,” brief with the nation’s top court in Stanford University v. Roche Molecular Systems, Inc., et al. (For additional background on the case, see this previous eNews post.) MIT argues that the case could jeopardize the important relationship between the federal government and research universities. Senior administrators say MIT, which is not a party to the case, is taking the unusual step of getting involved because issues raised in the case go to the heart of the Institute’s culture of innovation and the success. “MIT is an undisputed leader when it comes to transferring research breakthroughs into products and services that benefit the world, and it is therefore fitting that the Institute add its voice in this important case,” says Lita Nelsen, director of MIT’s Technology License Office.
Stanford sued Roche in 2005 for patent infringement. A federal district court denied Roche’s claim that it owned the IP in question, but the appeals court disagreed, saying that Stanford lacked complete ownership of the patents due to the ambiguous wording of an agreement that Stanford required all of its researchers to sign. The MIT brief argues that the success of the Bayh-Dole Act is threatened by the federal appellate court’s ruling. MIT says the appellate court, in its formalistic reading of the Stanford agreement, failed to consider the “clear sequence of ownership rights” defined by Bayh-Dole. “Had the court considered the import of the Bayh-Dole Act to the federal question of patent assignments, the court would have found that the chain of title led to Stanford and stopped there,” the brief states. MIT also says that if the appeals court ruling stands, it could divert the ownership of patents away from universities and the federal government. The brief asks the Supreme Court to review the case. At a minimum, the brief says, the Supreme Court should ask the federal government to weigh in on the matter.
Source: MIT news