Stanford sues for rights to inventions; Supreme Court decision may affect ownership rights for universities and private sector
Where research royalties go
35
Percent goes to the researcher or research group
15
Percent goes back to the academic department
50
Percent goes to the UC Board of Regents
SOURCE: Emily Loughran, director of licensing for UCLA Office of Intellectual Property
By Sean Greene
March 7, 2011 4:34 a.m.
Inventions regularly funnel out of UCLA’s research operations.
But with inventions come questions about patent rights.
If a UCLA researcher invents a new technology using federal funds, the researcher turns over ownership rights to the UC Board of Regents. The university then has the right to license the invention to private companies.
A piece of legislation from 1980, the Bayh-Dole Act ensures the university’s exclusive ownership of the researcher’s invention.
But this right may become less clear once a new United States Supreme Court case is decided.
The Supreme Court began hearing oral arguments last week in Stanford University v. Roche Molecular Systems et al.
The case centers around the ownership rights of HIV detection products. Stanford researcher Dr. Mark Holodniy worked for both the university and an outside company. Roche, a medical diagnostics firm, later bought that company. Stanford sued Roche in 2005 after years of the company’s refusal to purchase licensing rights to the university’s patent.
Under the Bayh-Dole Act, the university would own the rights to technology developed using federal funding, but a lower court ruled that the researcher’s agreement with Roche was also legally binding.
The Supreme Court’s decision would decide whether to uphold the university’s right to ownership under Bayh-Dole, or to side with the previous decision, which stated that Stanford and Roche shared the patent rights.
Along with about 80 other universities, the UC has sided with Stanford, stating that these patent rights “encourage companies to develop new products and services based upon research results,” according to a statement from the UC Office of the General Counsel.
Revenue from the sale of intellectual property is divided between the research group, the department in which it originated and the UC Board of Regents, said Emily Loughran, director of licensing for the UCLA Office of Intellectual Property.
If the case is decided in favor of Roche, however, ownership rights become less clear, Loughran said.
“If Roche prevails … it will call into question the ownership of thousands of inventions that have already been licensed,” Loughran said. “It could potentially put a cloud on inventions that were paid for by public funds.”
Further, Loughran said many companies are closing their research and development branches, and are therefore looking to universities to fulfill that basic research role.
The university’s right to ownership of the technologies developed by its researchers is a good thing, said Dr. Kalyanam Shivkumar, a professor of medicine and radiological sciences and the director of the UCLA Cardiac Arrhythmia Center.
“The interests of the university and the investigator are completely aligned,” Shivkumar said.
The university knows how to navigate the “intellectual property landscape,” identifying steps to commercialize the product or further develop it. The university is able to do this while upholding the researcher ““ and society’s ““ best interests, Shivkumar said.
He added that a case similar to Stanford v. Roche could not happen at UCLA because the regents have a very clear intellectual property ownership policy.
UCLA researchers cannot enter an agreement with an outside company that interferes with the UC’s intellectual property agreement.
“We are very careful in the medical field not to work with any other companies,” he said. “You can’t work for two bodies. You can only work for UCLA.”
