Serious Flaw of Employee Invention Ownership under the Bayh-Dole Act in Stanford v. Roche: Finding the Missing Piece of the Puzzle in the German Employee Act

66 Pages Posted: 9 Aug 2011 Last revised: 3 Jan 2015

See all articles by Toshiko Takenaka

Toshiko Takenaka

University of Washington - School of Law

Date Written: August 9, 2011

Abstract

In Stanford v. Roche, the Supreme Court highlighted a serious flaw of employee invention ownership under the Bayh-Dole Act (BDA). This article argues that the current BDA is incomplete without a mechanism for contractors to secure the ownership of all federally funded inventions and proposes a revision to introduce such a mechanism. Universities' failure to execute an express assignment will subject federally funded inventions to the common law ownership rules, which would not give the ownership to universities. Even with a written assignment, the different state laws and state legislations prevent contractors from securing the ownership of all federally funded inventions, thereby preventing the federal government from implementing a uniform policy. Therefore, this article proposes to adopt a mechanism for contractors to secure the ownership of federally funded inventions from the German Employee Invention Act (EIA). Because the EIA influenced the drafting of the BDA, the EIA and BDA share key features, which make it easy for the BDA to adopt an ownership transfer mechanism from the EIA. It also proposes to adopt a mechanism to protect inventors‟ rights for compensation from the EIA so that contractors can secure the ownership of federally funded inventions not only from their employees but also non-employees with just compensation through royalty sharing without a violation of the Fifth Amendment.

Keywords: Stanford Bayh-Dole, Employee, Invention, Ownership, Compensation Assignment

Suggested Citation

Takenaka, Toshiko, Serious Flaw of Employee Invention Ownership under the Bayh-Dole Act in Stanford v. Roche: Finding the Missing Piece of the Puzzle in the German Employee Act (August 9, 2011). Texas Intellectual Property Law Journal, Vol. 20, 2011; University of Washington School of Law Research Paper No. 2011-14. Available at SSRN: https://ssrn.com/abstract=1907309

Toshiko Takenaka (Contact Author)

University of Washington - School of Law ( email )

William H. Gates Hall
Box 353020
Seattle, WA 98105-3020
United States

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