News & publications
US Supreme Court issues opinion in University vs Industry patent ownership dispute- 23/06/2011
As we reported towards the end of last year, the US Supreme Court has been tasked with deciding who owns the rights in an invention developed by a Stanford University professor who also worked in industry (employed under an agreement that assigned to his industry employer all rights in his future inventions). The case centred on whether, under the Bayh-Dole Act, federally funded research is automatically owned by the University or whether the inventor owns the rights in any invention they create, and therefore is free to assign those rights. The starting point, under both UK and US law is that an invention is owned by the employee inventor. The Supreme Court decided that under US law an unambiguous statement by Congress would be required to divest inventors of their rights, and no such statement was contained in the Bayh-Dole Act. Therefore, the invention was owned by the inventor, and the inventor could assign that invention to their industry employer. This case highlights the degree of care that UK companies need to take when contracting to have work done by US institutions. It is important to ensure that the US institution has entered into appropriate agreements with its employees to obtain rights in intellectual property created by them, in order that those rights can be passed back to the UK party sponsoring the work. Stay tuned for our report on how the initial position of the employee invention is varied under UK law.