Document Type



Summer 7-26-2012


Stanford, patent assignments, recording patent assignments




This article analyzes the recent Supreme Court decision in Stanford v. Roche and concludes that the Court was correct in holding that the Bayh-Dole Act did not change the basic patent law norm that inventors hold initial title to their inventions; but, and more importantly, that the Court was wrong in finding for Roche because there cannot be an assignment of legal title to an invention until the invention is made, a patent application is filed or a patent is issued, and the inventor executes a written patent assignment that identifies the patent application number or patent number associated with the assignment. If the analysis supporting the latter conclusion is correct, tens of billions of dollars of patent rights could be at risk in the case of unethical employee-inventors, both in universities and the private sector. The article suggests management best practices to lessen this risk and law reform measures to eliminate this risk.

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