Daily Archives: February 25, 2011

Who owns faculty inventions? Stanford v. Roche

Apparently Stanford University thinks they do. And if they succeed in a court case to be argued at the Supreme Court on Monday their approach to faculty inventions would be a reversal of nearly a century of protections of faculty academic freedom.

The case (Stanford v. Roche) involves an interpretation of the Bayh-Dole Act which was passed in 1980 to encourage the commercialization of research funded by the federal government. Congress granted universities who receive federal research money the right to commercialize new technology through the licensing of patents to which they have proper title. Stanford maintains the Act gives them, automatically, full title to faculty inventions.

Typically, when hired faculty assign their rights, in writing, to inventions to their university in return for a division of any royalty revenue the invention might generate if licensed to the private sector for commercial purposes. For some universities, particularly Stanford and U.C. Berkeley, this has been a very lucrative arrangement. Companies like Genentech and Google have generated billions of dollars of licensing revenue back to those universities and to their faculty inventors for use of those original inventions.

Since the federal government did not think they were very good at that process of spinning off intellectual property they allowed universities to step into their shoes when inventions emerged from federally funded research on university campuses. But that grant of any rights the federal government may have had was not meant to take away the right of faculty to their own inventions much less to any revenue stream those inventions might generate.

If Stanford’s view of the world were to prevail it would reduce the status of faculty, who hold appointments, into mere employees engaged to do “work for hire” that belongs to the university. In other words, the university would cease to be a university, it would become no different than a private sector corporation. This would of course destroy the unique incentives and culture found at a university that lead to pathbreaking innovation in the first place.

An amicus brief defending the rights of faculty has been filed by the AAUP (of which I am a member), the IEEE-US and IP Advocate. The American Intellectual Property Law Association has also filed an amicus brief that makes a parallel argument.