Correction appendedThe United States Supreme Court has recently chosen to hear Stanford v. Roche, a case which concerns patent ownership of federally funded research at universities. On April 26, Brandeis University, along with the Association of American Universities and approximately 50 additional universities filed an amicus brief petitioning the Supreme Court to hear the case.

According to Senior Vice President and General Counsel Judith Sizer, the case resulted from a situation in 2005 in which Stanford University sued Roche Molecular Systems, Inc. for patent infringement regarding methods of evaluating the efficacy of anti-HIV therapies, which Stanford University post-doctoral fellow Mark Holodniy developed with funding from the federal government. In response, Roche claimed that Stanford did not have full title to the patents because the Stanford faculty inventor had signed a visitor confidentiality agreement while using a Roche lab, which gave Roche ownership of any invention from subsequent research at the lab.

Stanford claimed, however, that the involvement of federal funds provided the University with ownership to the patent because of the Bayh-Dole Act, legislation that gives universities the right to assume ownership of federally funded research.

The district court ruled in favor of Stanford, but Roche appealed the decision, and the U.S. Court of Appeals for the Federal Circuit overturned the district court. In response, Stanford petitioned the Supreme Court to hear the case and three amicus briefs, including the one filed by Brandeis. On Nov. 1, the United States Supreme Court decided to grant a writ of certiorari to the case, meaning the court will review it and hear oral arguments. The law firm Ropes and Gray LLP filed the amicus brief on behalf of Brandeis, the Association of American Universities and many other universities. In an alert sent out Nov. 1, the firm explained that "The proper interpretation of the Bayh-Dole Act is the central question at issue in Stanford v. Roche."

Sizer explained that Congress passed the Bayh-Dole Act in 1980 in an attempt to clarify ownership of research conducted at universities and give universities ownership of their research that is funded by the federal government.

Director of the University's Office of Technology Licensing Irene Abrams explained in an interview with the Justice that if there is clear ownership of a product, investors are more likely to invest in it.

"If university ownership as mentioned under Bayh-Dole is second to inventors or professors assigning to any third party, then it weakens the law and it weakens the ability to commercialize technology," said Abrams.

Abrams also noted that Brandeis has benefited from the Bayh-Dole Act with patents on products such as Smart Balance, developed by lipid expert Prof. K. C. Hayes (BIOL) and research scientist Dan Perlman (BIOL). Abrams added that Brandeis receives most of its research funding from the federal government. According to a Nov. 4 BrandeisNOW press release, the University has nearly 300 active patents and 53 active license agreements.

"The Act provides for the disposition of rights in a predictable and reliable way that allows universities and other nonprofit institutions to acquire clear title and license the inventions for development while at the same time reserving important rights for the federal government" said the amicus brief. An amicus brief is a legal brief filed by a "friend" of the court, meaning that the party filing the brief is not a party to the case but it has a significant interest in the outcome of the case.

Abrams said that if the Federal Circuit court decision stands, this case could create a problem for the University. "The concern is that it will put a chill over investment in early stage research which is an issue for Brandeis as a university" she said.

Sizer also warned that the ruling by the Federal Circuit court essentially overturns the Bayh-Dole Act and could threaten the legality of 30 years worth of patents that universities hold as well as the ability to attract investors to university research.

Sizer said that oral arguments will likely be held in March 2011, and she was unsure whether Brandeis and the Association of American Colleges would file another amicus brief in order to support Stanford University's position.

Correction: The article originally stated incorrectly that the Supreme Court chose to hear the amicus brief filed by the universities. In fact, the court only chose to hear Stanford v. Roche, the case associated with the amicus brief.