Stanford v Roche: The Impact on Management of University IP
Originally presented July 8, 2011

Last week, the U.S. Supreme Court decision in Stanford v. Roche left no doubt that, under Bayh-Dole, intellectual property created by university researchers belongs to those researchers unless IP ownership has been expressly granted to the university. The narrowly defined opinion has immediate implications for employment agreements with faculty, documentation requirements for transfer of IP rights, and collaborative research agreements with industry and other academic institutions.

The opinion, based on very specific language in the Bayh-Dole Act as well as very specific arguments made in the case, does not address the actual intent of the Act, as was clearly pointed out in Justice Breyer's dissent – leaving a very strong possibility of further challenges.

So, what does it all mean for the future of university IP management? Technology Transfer Tactics has recruited a top IP attorney for a one-hour program that will provide detailed answers to that question. We'll arm you with the guidance needed to assure existing and future contracts, agreements, partnerships, and documents don't leave your IP ownership at risk. You'll get expert advice on dealing immediately with IP assignment and ownership concerns in light of the decision, as well as clearly explained implications for the future. Please join us to consult with Kevin E. Noonan, PhD, JD, who is primed and ready to dissect the decision and its practical impact. Here's a look at the takeaways you can expect:

• A clear understanding of the Supreme Court's decision
• How to assure clearcut assignment of IP
  • How to deal with existing and future  collaborative research agreements
  • Strategies for reviewing and strengthening existing faculty agreements
  • Incorporating assignment into grant acceptance, invention disclosure, employment contracts
• Tips for managing the fallout among faculty
• Thorough review of Justice Breyer's dissent
• Likelihood and focus of future challenges
• Implications for:
  • First inventor to file
  • Bayh-Dole
• AND MUCH MORE!

Your Expert Presenter

Kevin E. Noonan, PhD, is a Partner with McDonnell Boehnen Hulbert & Berghoff LLP and has extensive experience in biotechnology and the chemical arts. Dr. Noonan brings more than 10 years of experience as a molecular biologist working on high-technology problems to his legal work. He has wide experience in all aspects of patent prosecution, interferences, litigation, and client counseling on validity, infringement, and patenting strategy matters. He represents pharmaceutical and biotechnology companies both large and small, and he is particularly experienced in representing university clients in both patent prosecution and licensing.