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Wow! What a hornets nest this case seems to have stirred. Sometimes it is helpful to go back to fundamental principles developed at common law. A classic Supreme Court opinion in a case decided almost a century ago, but still cited quite often, is STANDARD PARTS CO. V. PECK, 264 U.S. 52 (1924). Standard Parts had acquired the Hess-Pontiac Spring and Axle company and assumed that it owned the rights to an invention of William J. Peck. Mr Peck had been hired by the Hess Co. to help it develop a new "front spring". When hired, Mr. Peck signed an agreement which was silent as to ownership rights to any invention. So Mr. Peck said that he owned his invention. The Supreme Court decided that Mr. Peck did "nothing more than he was engaged to do and paid for doing." So Mr.Peck had transferred his right to ownership to his employer. I devoted a couple of years to the study of ownership rights to ideas and inventions in preparation for my book "Who Owns What Is In Your Head?" The Bayh-Dole Act is not necessarily inconsistent with the constitutional right of an inventor to his invention--provided that an inventor may transfer his ownership rights as a condition of employment. The transfer does not depend on a written agreement if the inventor, like Mr. Peck, did what he was hired to do and paid for. Conceivably, Bayh-Dole may be construed to apply to inventions for which the inventor had been hired, and his work had been sponsored by federal funds.Of course, Roche questions whether the work of the Stanford U. employee, while at Cetus, was sponsored with federal money. That is a fact issue. Whether the employee/inventors' first agreement with Stanford was subordinate to his later agreement with Cetus is a legal issue. The latter is important to Universities and Businesses that require a transfer of rights to inventions made in the course of employment,as a condition of employment. Those agreements may be vulnerable if superceded by subsequent assignments by the employee. But facts and pragmatic legal issues are boring. I do not mean to take away the fun arguing a constitutional issue. Stan
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Nov 6, 2010