Top Court Rules Against Stanford in Patent Battle Over HIV Test Kit

On Monday, the U.S. Supreme Court ruled 7-2 against Stanford University in a patent battle over a test that measures HIV levels in a patient's blood, the New York Times reports (Liptak, New York Times, 6/6).

The decision upholds a previous federal appeals court ruling that sided with pharmaceutical firm Roche Molecular Systems over the university (Mintz, San Jose Mercury News, 6/6).

Background

The case started when Stanford assigned Mark Holodniy -- a fellow at the university's department of infectious diseases -- to conduct research at the private firm Cetus Corporation, where he invented the HIV test.

Holodniy previously had signed a contract agreeing to assign to Stanford any inventions arising from his employment at the university. However, he later signed a contract assigning to Cetus all inventions stemming from his time there. Roche later bought Cetus' rights to the HIV test and produced a testing kit for hospitals and clinics.

Stanford then sued Roche, alleging that Holodniy lacked the authority to assign the invention to Cetus because of a 1980 federal law -- the Bayh-Dole Act -- that outlines patent rights when federal funds are involved (New York Times, 6/6). The university said NIH funding was used to develop the HIV test (Kendall, Wall Street Journal, 6/7).

Ruling Details

Writing for the majority opinion, Chief Justice John Roberts wrote that in general, "rights in an invention belong to the inventor," even if the new product was created while working for an employer (New York Times, 6/6).

Roberts said the Bayh-Dole Act stipulates that federal contractors, such as universities, can "elect to retain title" to inventions. However, he noted that the law "does not vest title" automatically in universities or other employers (Savage, Los Angeles Times, 6/7).

Roberts wrote, "Although much in intellectual property law has changed in the 220 years since the first Patent Act, the basic idea that inventors have the right to patent their inventions has not" (Barnes, Washington Post, 6/6).