November 5, 2010
On Monday, the US Supreme Court agreed to hear an appeal by Stanford University over whether patent rights to federally funded academic research on an HIV diagnostic can be unilaterally terminated by a researcher's side agreement with a third party. The long-running suit involves work that Stanford researcher Mark Holodniy and Cetus Corp. conducted two decades ago in developing a polymerase chain reaction assay to monitor antiviral therapy.
The university is asserting the patent rights over its federally funded medical researchers, citing the 1980 Bayh-Dole Act. That act distributes such patent rights among the government, investors, and federally funded research institutions.
Stanford is appealing a lower federal court decision that the university did not have clear claim to the patents because in 1989 Holodniy arranged with Cetus Corp., which was later acquired by Roche, to give the rights to the products of his AIDS research to Cetus. That is what lawyers for Roche have argued.
The Obama administration and the Association of American Universities are backing Stanford, concerned about the case's potential impact on research institutions. A coalition of leading universities warns the lower court's ruling could jeopardize the "success story" of federally funded research, "casting in doubt the rights of universities and the federal government alike to inventions arising from hundreds of billions of dollars in research."
Court papers show Holodniy led the Stanford research project after completing his work with Cetus. The university is arguing the Bayh-Dole law governing federally funded research trumps any side agreements between an inventor and private company.
The Supreme Court will likely hear arguments early next year and decide the case by the end of its term in June.