A relevant case-study

HIGHER EDUCATION: The Bayh-Dole Act is still a relevant tool in maintaining continued innovation at research universities.

The U.S. Supreme Court case Stanford v. Roche, which centered on Stanford University’s attempt to assert control over an HIV-detection kit invented by School of Medicine professor Mark Holodniy, appeared to come down to semantics. Fortunately, the ruling on June 6 is not fatal to the Bayh-Dole Act, which allows universities to retain title to inventions made during federally funded scientific studies and is necessary for universities to further develop inventions made with grant money.

While Stanford v. Roche is a unique case due to the ambiguities surrounding Holodniy’s contracts, the case is significant because it exemplifies the importance of clear contracts between institutions sponsoring projects with federal grants and the professors who have access to that money.

Though the Supreme Court ruled that Holodniy’s contract with Cetus Corporation — later acquired by Roche Molecular Systems Inc. — took precedence over his contract with Stanford, the case can still be used as a learning tool for research universities. Contractual agreements must be clear in order for the Bayh-Dole Act to apply. Without such clarity, a university cannot retain title to inventions — an unfortunate loss for both research universities and the people they serve.

When applied, the Bayh-Dole Act maintains the public nature of federally funded research. In most instances, the royalties that ensue from inventions made with federal dollars should be used in a public manner. In the case of a research university, these royalties should be used for education and research funds, maintaining scientific excellence and ultimately benefiting the community.

While it is difficult to deny the importance of intellectual property and the rights of individual inventors, a balance must be found where royalties arising from grant-sponsored research are clearly marked for both the researcher and the public who sponsored the research through tax money.

The University of California is a flagship research university partly because it attracts world-renowned scholars and partly because it continues to serve the people of California through innovation. We hope that Stanford v. Roche reminds the students, faculty and administration of the stakes: funding, research and title.