TTO directors remember their sickening feeling when the Stanford vs. Roche sent them scrambling for legal advice about university researched invention ownership and assignment. SCOTUS held that an earlier researcher promise to assign IP to their universities was trumped by an actual assignment made later. The case stirred debate about choice of law conflicts between state contracts law and federal patents. More important it raised the question of how to reliably verbalize future pre-invention assignments. Was an assignment valid if executed pre-invention? Were assignments necessary every time an invention or discovery occurred? Some universities have focused on acknowledging a PI’s on-going responsibility to report to university TTO’s any investigative undertaking that could possibly be patentable. One of the issues now raised by the Alice/Mayo eligibility line of cases may be the narrowing meaning of “potentially patentable” in the UCSC case described below where the university focused more on the researcher’s acknowledging a dual obligation to assign and disclose patentable inventions. The relevant UCSC operable language appears to have been:
“I acknowledge my obligation to assign inventions and patents that I conceive or develop while employed by University or during the course of my utilization of any University research facilities or any connection with my use of gift, grant, or contract research funds received through the University. I further acknowledge my obligation to promptly report and fully disclose the conception and/or reduction to practice of potentially patentable inventions to the Office of Technology Transfer or authorized Licensing office.”
We never legally opine or advise on any issue. We attach below an IPWatchdog post by Steve Brachmann simply to call your attention to another university patent assignment case now headed into court. Now that spring training season has arrived, readers may wish to keep an eye on it or have their patent counsel take another look at their IP assignment language policy and implementation before the courts throw us all another bean ball.
University of California seeks assignment of nanopore patents from former grad student, by Steve Brachmann on Mar 26, 2017 08:15 am
“At the center of the legal spat is the proper assignation of a series of patents covering DNA sequencing technologies, which UC alleges were developed while the inventor was under an agreement obliging him to assign those patents to UC… Chen’s work in the UCSC biophysics lab led to the development of a series of inventions related to individually addressable nanopores, which can be used to characterize a nucleic acid sequence in a nucleic acid molecule. These inventions were described in patent applications filed by UC with the U.S. Patent and Trademark Office (USPTO) listing Chen as an inventor… Instead of following his contractual obligations to assign his invention to UC, Chen allegedly filed patent applications and received patent grants assigned to medical technology firm Genia Technologies, a company he founded in March 2009 after leaving UCSC.”