Marshall, Gerstein & Borun Partner Examines Potential Effect of Upcoming Supreme Court Ruling on America’s Scientific Research

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Intellectual Property Attorney Robert M. Gerstein Assesses Possible Impact of Stanford v. Roche on Federally-Funded Research Under the Bayh-Dole Act

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The case will likely impact the work under every federally-funded grant and the billions of dollars to the U.S. economy that result from scientific research.

In keeping with its policy of providing in-depth analyses of current intellectual property issues, Marshall, Gerstein & Borun announces that partner, Robert M. Gerstein, provided comprehensive analysis into the Supreme Court’s upcoming ruling in Stanford v. Roche and the impact it may have on the Bayh-Dole Act, which controls ownership of inventions funded by the federal government.

At the center of the controversy are conflicting patent ownership agreements that a researcher had with Stanford University and a predecessor to Roche Molecular Systems. Stanford looks for support for its position that it should own certain patents, by citing the Bayh-Dole Act’s ownership provisions. “Stanford would have the court rule that the act has broad scope, sweeping within its ambit any invention that has been touched by federal funding,” says Gerstein, “while Roche construes the act so narrowly, that the act would be irrelevant to its contest with Stanford over patents that arose, in part, from federally-funded research.”

Enacted in 1980, Bayh-Dole allows research institutions to own patents covering certain “subject inventions” created with federal funding. Gerstein provides background on the act, summarizes the dispute before the Supreme Court and offers thought-provoking opinions on the oral argument in early 2011. “Some of the justices seemed to be searching for a way to limit the case to its unusual facts, without having to address the breadth of the act,” says Gerstein.

Gerstein also analyzes how the upcoming Supreme Court ruling may affect the interpretation of Bayh-Dole in future disputes, even where those disputes do not involve ownership of patents. “Whether Stanford or Roche prevails,” says Gerstein, “the case will likely impact the work under every federally-funded grant and the billions of dollars to the U.S. economy that result from scientific research, whether public, private or, as in Stanford v. Roche, through a combination of the two.” The entire article, as published on Law360, March 23, 2011, can be found here.

Robert M. Gerstein is a partner at Marshall, Gerstein & Borun, where he concentrates on licensing, intellectual property transactions, and related litigation and opinions. Marshall, Gerstein & Borun is an intellectual property law firm located in Chicago focusing on patent and trademark prosecution, copyrights, trade secrets, IP transactions, litigation and technology transfer. For more information about the firm, visit http://www.marshallip.com.

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