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Supreme Court Rules on Scope of Federal Contractors' Rights in Federally Funded Inventions

June 7, 2011

On June 6, 2011, the United States Supreme Court, by a 7-2 margin, held in Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., No. 09-1159, that the term "subject invention" in the Bayh-Dole Act (35 U.S.C. § 200, et seq.), the statute that allocates certain rights in federally funded "subject invention[s]," includes only inventions for which the contractor has obtained a valid assignment from the employee inventor(s), and, therefore, that a contractor (and presumably the government) cannot obtain rights to an invention under the Bayh-Dole Act absent such an assignment. In so holding, the Court stated that the Bayh-Dole Act "simply assures contractors that they may keep title to whatever it is they already have" – which serves as a reminder to federal contractors desiring title to their employees' inventions to obtain valid assignments.

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John E. McCarthy Jr.
Partner – Washington, D.C.
Phone: +1.202.624.2579

Jonathan M. Baker
Partner – Washington, D.C.
Phone: +1.202.624.2641

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