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Stanford v. Roche: The Return of “Talismanic Incantations”

by Orlando Lopez

In reviewing the manner in which Miranda warnings are given, the Supreme Court has stated that there are no “talismanic incantations;” however, as the case of Stanford v. Roche indicates, the language used in employment/contractor/consultant agreements can have a very large impact on the interpretation and effect of the agreement.

Cetus, a small research company, had collaborated with Stanford on the efficacy testing of new AIDS drugs.  In the process of the collaboration, a Stanford researcher, Holodniy, conducted research at Cetus in order to learn the technique known as PCR.  PCR is a Nobel Prize winning technique which was developed at Cetus.  Stanford eventually obtained three patents on the process for measuring the amount of HIV in a blood sample and Holodniy was listed as an inventor in the three patents.  Roche Molecular Systems acquired Cetus and commercialized the HIV measurement method developed there.  Stanford sued Roche for infringement of the three patents.  Roche claims that Stanford had no standing to sue.The District Court did not allow Roche’s claim of Stanford’s lack of standing, but found the three patents invalid due to obviousness.  The Federal Circuit reversed the decision regarding standing, finding that Stanford had no standing to sue and reversed the finding of invalidity. Stanford appealed the finding of lack of standing to the Supreme Court arguing that, since the invention was either conceived or reduced to practice with the support of federal funds, the Bayh-Dole Act gives title to those inventions to the contractor, Stanford.  The Supreme Court granted certiorari and upheld the Federal Circuit.

The Supreme Court opinion reasserts that although contractors, under the Bayh-Dole Act, may elect to take title of subject inventions developed under the contract, inventors must assign the invention in order to grant title.  The opinion also restates that, under the present Federal Circuit law, when there is a conflict of priority of title, a document stating that the inventor “will assign and hereby assigns” grants title at the time of signature, while a document stating that the inventor “will assign” just creates a duty to assign and does not serve to assert that title was granted at the time of signature.  Although the Court questioned the above stated Federal Circuit holding, the Court did not review that holding.  Therefore, until there is a decision of the Court reversing the above stated Federal Circuit holding, the “cognoscenti” (as labeled by Justice Breyer in his dissent ) will use language in a document such as employment agreements, patent agreements and the like, stating that the employee/consultant “will assign and hereby assigns” the intellectual property.

In this particular instance, Stanford had executed a Copyright and Patent Agreement with each of the inventors, where the agreement stated that the inventor “will assign” the intellectual property.  One of the inventors, Holodniy, in the process of working on the invention at issue, subsequently executed a Visitor’s Confidentiality Agreement with Cetus (later acquired by Roche) and the agreement stated that the inventor “will assign and hereby assigns” any invention resulting from their collaboration.  When the patent applications were filed, Stanford obtained assignments from all the inventors.  The Copyright and Patent Agreement between the inventor and Stanford University merely stated that the inventor “will assign rights” to the invention to Stanford University, instead of stating that the inventor “will assign and do[es] hereby assign.” Consequently, as in the case of the language between the inventor and Cetus, according to present Federal Circuit law, the Cetus claim to title had priority.

Therefore, until there is a Supreme Court ruling to the contrary, the “cognoscenti” will use the talismanic incantation “will assign and do[es] hereby assign,” in employment/ consultant agreements and the like.


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