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Universities need to be very careful about what agreements they have researchers sign, and especially vigilant with respect to consulting agreements signed in the course of joint ventures between the university and industry.

In Stanford v. Roche, both parties claimed ownership of the IP in the research and technology related to a procedure for calculating the amount of HIV in a patient’s blood. This technique allowed doctors to determine whether a patient was benefiting from HIV therapy. Roche commercialized the technique in HIV kits, which are used in hospitals and AIDS clinics worldwide. The dispute came about because the Stanford researcher signed a Copyright and Patent Agreement (CPA) when he began his employment with Stanford, assigning all his IP rights resulting from his employment, to the university. Stanford entered into a consulting relationship with the private lab that originally developed the technology, to improve the methods for quantifying the HIV in a patient’s blood. When the researcher visited the facilities of the private lab, he signed another agreement, unaware that it conflicted with the earlier agreement he had signed with the university.

This ‘Visitor’s Confidentiality Agreement (VCA)’ assigned to the lab all future IP developed as a consequence of his access to the lab. Roche subsequently acquired the ownership of all the lab’s IP. The university was unaware of this agreement. When the process was commercialized by Roche, Stanford University sued for breach of patent rights.

In the end, Roche won, as confirmed by the Supreme Court of the United States.

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Take away:

  • Consultants must take care that they do not sign conflicting IP Transfer agreements.


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