Patents can make a lot of money for their holders, but they can also make money for colleges and universities. Institutions like Stanford University run an office of “technology transfer” or “technology licensing,” encouraging students and faculty to innovate on-campus and let the university handle patent matters. Now, a case involving who rightfully controls patents from federally-funded academic research is headed to the U.S. Supreme Court.
Stanford is suing the pharmaceutical giant Roche over technology that tests the levels of HIV in a patient’s blood. The University says it owns the technology because it was discovered on campus. But Roche says the researcher, Mark Holodniy, signed a contract that gave the company patent rights to any products of their collaboration. The lower court’s ruling killed a counterclaim from Roche because they filed it too late, the ruling also dismissed Stanford’s claim because the university did not have “standing” to accuse the company of infringement.
This kind of federally-funded research comes from the Bayh-Dole Act of 1980. In it, Congress gave universities the patent rights to inventions that result from research conducted on their campuses. Stanford is fighting Roche because licensing patents can bring big money to a university, especially if the innovation takes off. If the university loses the case, it could lose money from future patents. (Ever heard of Gatorade? It’s not covered by this law per se, but it still brings millions of dollars to the University of Florida each year, because it was invented there in the sixties.) A recent annual report from Stanford’s Office of Technology Licensing says that innovations controlled by the University generated more than $65 million in the 08-09 fiscal year.