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les Nouvelles - March 2010


Recent U.S. Decisions And Developments Affecting Licensing - March 2010

Brian Brunsvold

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Attorney, Washington, D.C., USA

John C. Paul

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Attorney, Washington, D.C., USA

UNIVERSITY DOES NOT OBTAIN TITLE TO AN INVENTION FROM A RESEARCHER WHO AGREES TO ASSIGN HIS INVENTION TO THE UNIVERSITY, AND WHO LATER ASSIGNS HIS INVENTIONS TO A THIRD PARTY BEFORE ASSIGNING HIS RIGHTS TO THE UNIVERSITY

In order to assert patent infringement claims, a plaintiff must have standing to sue entitling it to have the court decide the merits of the dispute. In a patent infringement case, all co-owners normally must join as plaintiffs to establish standing and have a district court to reach the merits. If a plaintiff has received an assignment from each and every inventor who is the co-owner, then the plaintiff is the sole-owner and can file suit without joining the inventors as co-plaintiffs. In Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832 (Fed. Cir. 2009), the U.S. Court of Appeals for the Federal Circuit held Stanford did not have standing to sue Roche because Stanford did not have an assignment from one of the inventors, who was not joined as a plaintiff.

This case involved assignment and ownership of a family of patents covering a method for quantifying HIV and correlating the measurements to the therapeutic effectiveness of antiretroviral drugs. The patents all had a common parent application filed in May 1992. The patents grew out of collaborations between researchers at Stanford and Cetus, a company that developed the measurement technique. Stanford researchers, including Mark Holodniy, applied Cetus’s technique to HIV, which led to the patented method.

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