A transfer of patent or patent application can be the result of a financial transaction, such as an assignment, a merger, a takeover or a demerger, or the result of an operation of law, such as in an inheritance process, or in a bankruptcy.
Justice Breyer also characterized the Federal Circuit holding in rule as “undercut[ting] the objectives of Bayh-Dole” and “remain[ing] a technical drafting trap for the unwary” (views with which I also completely agree).
I would further add that the Federal Circuit’s “formalistic” case) in allocating invention rights between competing ownership claims (one of which is by a university subject to Bayh-Dole obligations) is also inconsistent with (or at least potentially frustrates) other provisions of Bayh-Dole.
; and (3) relative to the invention rights at issue, how much were those rights based on Stanford University’s federally funded research, versus how much were based on the research activities carried out at Cetus?
The factual record discussed in the Supreme Court’s opinion, as well as the prior Federal Circuit opinion, is complex and muddled, or at least not very clear on these three points.
As Breyer saw it, the Cetus Assignment Clause, as well as the Stanford University Assignment Obligation, “would give rise only to equitable interests” in the HIV RNA assay invention.
And “as two claims in equity,” because the Stanford University Assignment Obligation came chronologically before the Cetus Assignment Clause, and because Stanford University had subsequently obtained an assignment of the HIV RNA assay invention from Holodniy after it existed, that “should have meant that Stanford [University], not Cetus, would receive the [invention] rights.” (It’s not exactly clear from Justice Breyer’s dissent whether he was postulating this statement based on the Stanford University Assignment Obligation being “factually” first in time, or “theoretically” first in time, relative to the Cetus Assignment Clause).
But I do give him significant credit in recognizing that Bayh-Dole does evidence a “scheme,” or as he calls it, “a hierarchy,” for how ownership of invention/patent rights is (or should be) allocated for federally funded research: (1) first, to the funded organization; (2) next, to the federal government; and (3) last, to the employee/researcher.
In other word, Bayh-Dole provides a “pecking order” for who gets the first claim to ownership of those rights, similar to a “right of first refusal” in a license agreement.
And no amount of “silence” on the part of those 6 Justices as the impact of this “do hereby assign” issue can necessarily be construed as an “affirmation” that the Federal Circuit “got it right” in , as Justices Sotomayor and Breyer both clearly pointed out.
(Sotomayor concurred with those 6 Justices solely on the basis that Stanford University, in essence, “waived” that issue.) Even in dissent, Justice Breyer (who I will admit is one of my least favorite Justices, especially when it comes to interpreting patent law issues) said he would “likely agree” with the 6 Justices that Bayh-Dole doesn’t cause an automatic transfer of invention rights to the federal contractor/grantee.