(zt) 政府资助的发明专利权力

The Supreme Court on February 28, 2011, heard oral argument in a case involving a patent ownership dispute between a university whose researcher worked with federal funding and a company for which the same researcher later worked on a related project. (Board of Trustees for Leland Stanford Junior University v. Roche Molecular Systems, Inc., U.S. No. 09-1959, oral argument 2/28/2011).
Background
The inventor, who was employed by Stanford University, signed an assignment agreement with Stanford, and later did further work at a Cetus laboratory (now owned by Roche), which had a collaberating relationship with Stanford. The inventor at that time was also required to sign a Cetus assignment agreement for work he did there. Cetus obtained a patent on the inventor's work, and Stanford subsequently did the same. In Stanford's infringement suit against Cetus, the district court refused to consider a Cetus challenge to Stanford's patent ownership.
The Federal Circuit reversed, finding that the Cetus assignment prevailed over the Stanford assignment.
Oral Argument
Several of the Justices were clearly uncomfortable with the thought that the government's interest in federally-funded inventions could be subverted by unexpected contracting arrangements between the inventor and third parties.
Stanford's principal patent ownership argument was that, under the Bayh-Dole Act, the work of its inventor was within the scope of its government-funded project. As such, Stanford claimed both a legal and equitable right to the patented invention, pointing out that one equitable consideration to be made is the U.S. funding of the work. This argument seemed to resonate with Justices Sotomayor, Breyer and Kagan, and to some extent with Chief Justice Roberts. They found it inconceivable that Congress, in assuring its interests in federally-funded inventions, would leave unattended the basic requirement that the government contractor obtain an assignment. Justice Breyer suggested that, where an employed inventor makes an assignment to its employer subject to Bayh-Dole, the inventor's subsequent and inconsistent assignment to a third party might be void as a matter of public policy.
However, Justices Scalia, Kennedy, Alito and Ginsburg seemed skeptical of Stanford's position. Justice Ginsburg noted that the case could be decided narrowly based on the differences in assignment language used by the parties: under Stanford's instrument, the inventor said "I will assign"; under the Cetus instrument, the inventor said "I hereby do assign." With this language, she said, the Cetus assignment prevails because it was earlier in time. Justice Alito suggested that universities for the last 30 years have operated on the assumption that obtaining an assignment is essential. He also noted that the statute provides for the university to "retain" title in a federally funded invention as against the government's interest; it does not provide a right to "obtain" title from the inventor by operation of law.
Justice Scalia was skeptical about reading Bayh-Dole as making a fundamental change to patent law concerning the initial grantee of the patent. His response to the risk that an inventor's third party assignments could circumvent Bayh-Dole was direct: condition funding on a iron-clad assignment from the inventor to the university. Justice Roberts suggested that universities may impose less demanding assignment requirements for famed researchers it wants to attract. Justice Kennedy asked if the public policy argument was properly preserved for appeal, observing that the Federal Circuit did not address it. Stanford said the public policy argument is central to its contention that the inventor cannot assign a future invention where Bayh-Dole has already spoken for it.