Friday, October 16, 2009

Big Win for Academic Inventors

Federal Circuit Court Hands Academic Inventors a Big Win – IP Advocate Founder Says Decision Affirms That Faculty Inventors, Not Universities, Own Their Inventions


A recent Federal Circuit Court decision confirms that universities do not automatically have the right to claim ownership of a faculty researcher’s federally funded invention. That’s a critical distinction that could protect faculty inventors and students nationwide from being forced by universities to sign away the rights to their life’s work, according to Dr. Renee Kaswan, inventor of the billion-dollar drug Restasis® and founder of the non-profit organization

“The court’s ruling confirms that faculty inventors own the rights to their ideas and their creations, and that universities can no longer use the Bayh-Dole Act as a bulldozer to claim ownership away from the inventors themselves,” said Dr. Kaswan. “Inventors should be able to choose for themselves with whom to partner to bring an innovation to the marketplace and to the people who need it. Stanford’s policy is more inventor-friendly than most, but it’s the overarching principle of inventor ownership that wins in this case.”

U.S. Court of Appeals for the Federal Circuit
Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. The patents involved HIV test kits.

Decision on September 30, 2009; opinion authored by Federal Circuit Judge Richard Linn. See the opinion here:

The Court rejected Stanford's argument that one of the inventors’ assignment of rights to another entity, Cetus, was voided by the university's rights to federally funded inventions under the Bayh-Dole Act. The court’s ruling states: “Bayh-Dole does not automatically void ab initio [from the beginning] the inventors’ rights in government-funded inventions.”

Why this matters now: The 30th anniversary of the Bayh-Dole Act of 1980 is just around the corner, and it’s time to correct the rampant misuse of the law to take IP ownership away from faculty inventors. As the Obama Administration and Congress push for patent reform, and as the country relies on innovation as an engine of economic recovery, the question of the ownership of ideas is crucial in moving those ideas forward from an inventor’s mind to an entrepreneur’s office to a consumer’s bedside table as quickly as possible.

Dr. Renee Kaswan is founder of the non-profit organization, IP Advocate (, inventor of the billion-dollar drug Restasis®, founder of Georgia Veterinary Specialists and former University of Georgia Veterinary Ophthalmology professor. Her patented treatment for chronic dry-eye remains the most profitable invention in UGA’s history and has been hailed as one of the “University Innovations that Changed the World” by the University of Virginia Patent Foundation. Dr. Kaswan was recognized by the University of Georgia as its “Inventor of the Year” in 1998 and received UGA’s Creative Research Medal in 1992.

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