Advertise - Print Edition

Brandeis University's Community Newspaper — Waltham, Mass.

US Supreme Court case could sway univ patents

Published: November 12, 2010
Section: Front Page

The United States Supreme Court decided last week to hear a Stanford University patent case after a brief filed by many other colleges, including Brandeis, urged the court to accept it.

The case would determine the true ownership of inventions created at universities with government funds, according to Senior Vice President Judith Sizer, the university’s general counsel.

“Under the Bayh-Dole Act, universities have owned the title of inventions by their faculty or [post-doctoral researchers] as the institution of research,” Sizer said. Currently, Brandeis earns $1.6 million annually from technology licensing.

Passed in 1980 to provide order to the research patent system, Bayh-Dole has ensured that universities maintain the rights to market the inventions. But the recent Stanford case has put the crux of Bayh-Dole in jeopardy.

Stanford sued a biotech company, Roche Molecular Systems, Inc., for patent infringement after the company used a contract signed with the inventor, a Stanford professor.

A district judge in California threw out Roche’s claims to the product, a chemical method for judging the success of HIV drugs.

The judge said Roche’s contract was invalid because the technology was not the professor’s to sign away.

On Roche’s appeal, the intellectual property chamber of federal circuit court reversed the decision.

“This sent the academic research community into a tailspin,” Sizer said, adding that if a professor could sign away technology, the ownership universities have in order to get other investments in technology would be lost.

While a significant portion of the university’s $1.6 million in licensing revenue comes from the widely known Smart Balance brand of products, the university owns more than 300 active patents.

“For a university of our size, we are over-performing in economic development,” Irene Abrams, director of the university’s office of technology licensing, said.

While the $1.6 million is not a huge part of the university’s operating budget, “it is really important because money from patents and technology licensing is not tied to and particular use, so it’s very valuable,” Abrams said.

The Bayh-Dole Act mandates several conditions that come with the university’s privilege of ownership. For example, a certain amount of money earned from the patent must go to the original creating inventor. Brandeis gives 40 percent of earnings to its inventors, a statistic Abrams called “generous.”

The money the university keeps goes toward academic research, planning and other resources to maintain the university’s learning priorities, as mandated by the act.

Brandeis joined the American Association of Universities to file its brief with the Supreme Court in order to ensure that its ownership of patents is confirmed and the university can continue to license technology for revenue.

Letting the decision of the circuit court stand would “put a question mark on ownership of all university inventions,” Abrams said.

The Supreme Court will hear oral arguments in the case in March. The association is considering filing an additional amicus or “friend of the court” brief arguing for Stanford on the merits of the case now that the court has agreed to hear it.