On February 1, 2011 the AAUP filed a joint amicus brief (.pdf) in support of the patent ownership rights of thousands of faculty researchers and inventors to their inventive work. The brief was filed in collaboration with the Institute of Electrical and Electronics Engineers (IEEE) and IP Advocate, a nonprofit advocacy group. Originally filed as a patent infringement lawsuit by Stanford University against Roche Molecular Systems, Inc., this complex case has evolved into a broader battle over the patent rights of faculty members to their inventive work. Specifically, the case centers on the dispute over who owns the patent rights to inventions developed in academia and funded, fully or partially, through federal government grants.
In support of its patent infringement claims, Stanford University has asked the Supreme Court to interpret the federal Bayh-Dole Act as automatically taking ownership rights away from inventing faculty members and vesting that ownership interest in the faculty members’ college or university whenever federal research funds are involved. The AAUP, IEEE, and IP Advocate believed that this interpretation would contradict existing patent law and is counter to the process of patent assignment that has worked successfully under the Bayh-Dole Act during the thirty years of its existence.
The Bayh-Dole Act became law in 1980 and was intended to address concerns about government funding agencies’ inability to efficiently transition publicly funded research from development to application. During the last thirty years, the law has positively influenced how academic inventions have transitioned from the research to application phase in order to benefit the public. The joint AAUP, IEEE and IP Advocate brief, therefore, endorsed the purpose of the Bayh-Dole Act and argued that it is unnecessary and potentially harmful for the law to be reinterpreted to take ownership rights from faculty researchers. The brief emphasized that the act does not alter the basic ownership rights granted by law to faculty inventors (which faculty may then assign to their college or university by contract).
Furthermore, the joint brief strongly rejected an argument made by Stanford and other universities and higher education associations that faculty researchers are employees who have been hired to invent and therefore are not entitled to ownership of the products of their inventive research. As the AAUP’s 1915 Declaration of Principles on Academic Freedom and Academic Tenure states, faculty “are the appointees, but not in any proper sense the employees of [the university trustees].” Historically and legally, academic researchers and inventors are, and always have been, much more than mere employees to their institutions. To argue otherwise flies in the face of longstanding academic practice and poses a grave risk to society’s interest in a thriving culture of discovery and creation.
Update: In a victory for the AAUP and faculty researchers and inventors nation-wide, on June 6, 2011, the Supreme Court in a 7-2 opinion (.pdf) reaffirmed the Fourth Circuit’s holding and held that inventors who create with the aid of federal funding do not automatically give up their patent rights. The Court rejected Stanford’s arguments interpreting the Bayh-Dole Act broadly, instead it reviewed the law through the plain meaning of the Act’s terms. The Court’s decision also emphasized that the Bayh-Dole Act did not overturn two centuries of patent law supporting the principle that an inventor has a right to retain the patent to his or her invention.