Law School News
Professor Sean O’Connor and David W. Hill, President of the American Intellectual
Property Law Association (AIPLA) co-authored a Supreme Court amicus brief in the
Board of Trustees for Lelenad Stanford Junior University v. Roche Molecular
Systems, Inc. case.
The amicus brief (U.S.
No. 09-1959) filed 12/23/2010 by AIPLA supporting neither party, argues to
the Supreme Court that the Bayh-Dole Act did not change the well established
rule that patent rights in an invention vest initially and personally with the
inventor, and that such rights generally must be conveyed expressly, despite
Government funding arrangements made for the inventor's research. The brief
addresses a case in which an inventor's assignment agreement was found by the
Federal Circuit to be a "mere promise to assign rights in the future, and not an
immediate transfer of expectant interests." By contrast, a later agreement with
a collaborating research firm, stating "I do hereby assign," conveyed to that
firm immediate equitable title in the inventions. Under these circumstances,
according to the brief, the university had no title for the Government to
acquire under Bayh-Dole.
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