June 9, 2011
The Supreme Court ruled in favor of a private pharmaceutical company in a heated patent rights battle (Stanford v. Roche). Last week’s decision complicates current university patents, as the majority of justices ruled that neither the government nor institutions that receive federal research grants are guaranteed automatic rights to patents that may arise from the research.
In 2005, Stanford University contested Roche Molecular Systems’ patent rights of an HIV detection kit, as the kit process heavily relied on polymerase chain reaction technology initially developed at the university. This R&D was produced by former faculty member Mark Holodniy who went onto expand the research at Cetus, a private biotechnology research company. Holodniy had originally signed a contract ensuring Stanford University the authority to assign patent rights in the future to his research, though later yielded all patent rights because of his access to Cetus research facilities. Consequently, Holodniy’s intellectual property was guaranteed to Cetus and was later acquired by Roche.
Although much of the flak for Stanford’s loss in the ruling stems from the ambiguous language of the initial contract between Holodniy and the university, other research universities and their associations such as the American Association of Universities (AAU) and Association of Public and Land Grant Universities (APLU) are still concerned with the long-standing implications of this decision.