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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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Last updated 1/10/2011