In June 2011, the Supreme Court ruled on the case of Stanford v. Roche that, under federal law, faculty inventors do retain the rights to their inventions unless they specifically assign those rights to their university. The Court's decision clarified the intent of the Bayh-Dole Act, which set forth rules governing research performed using federal funding.

In response to the High Court decision, universities such as University of California/San Diego and the University of California/Davis, have required their faculty to sign "amendments" to their original employment contracts that would indisputably assign the rights to their current and future inventions to their university.

Experts in the field of intellectual property and technology transfer, including Dr. Gerald Barnett of the University of Washington, have written that these actions by the University of California are directly counter to the High Court's ruling and the intent of the Bayh-Dole Act. "This is an important law that govern federal agency interests in inventions made with their support," said Dr. Barnett. "However, university administrators have misinterpreted Bayh-Dole for years, by forcing assignment of inventions and therefore stripping university inventors of their rights. The Supreme Court flatly rejected this portrayal in Stanford v. Roche."

Dr. Renee Kaswan, founder of IP Advocate, adds; "Bayh-Dole freed university inventors from the compulsory ownership claims of federal agencies. Now, universities are making their own compulsory claims on all faculty inventions. IP Advocate aims to restore freedom to invent in universities, which is at the heart of Bayh-Dole and American university innovation."

Read "Sample Language for my UC Friends", where Dr. Barnett lays out seven points for faculty while exploring their options before signing anything. Read now>>

Also Read Dr. Barnett's Rev Proc 2007-47's Nonsensical Attack on Bayh-Dole

Congress officially passed the America Invents Act on September 8, 2011. This much anticipated legislation represents sweeping changes made for the first time in over a half-century that will impact the future of intellectual property, university research and independent inventor rights. IP Advocate opposed many of its provisions. However, we are now focused on educating faculty and student researchers on its new policies and procedures so you can protect your intellectual property today. We have devoted a special section that chronicles the Road to Patent Reform that features expert commentary, news and resources to keep our community informed.

Read Patent Reform to learn about the American Invents Act

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