Biotechnology and Patent Law: Looking at Stanford, Myriad, and Patent Reform Legislation


Dan Vorhaus, JD, Editor, Genomics Law Report Bio and Contact Info John Conley, PhD,, UNC, Chapel Hill Bio and Contact Info

Listen (23:15) Dan V & John C - Myriad Case

Listen (03:29) Dan V & John C - Stanford v Roche

Listen (03:03) Dan V & John C - America Invents Act

Kevin Noonan, PhD, Bio and Contact Info

Listen (03:11) Kevin N - PatentDocs Blog

Listen (09:40) Kevin N - Myriad Case

Listen (12:55) Kevin N - Patent Reform

Listen (05:46) Kevin N - Stanford v Roche

On June 6, the Supreme Court handed down a decision on Stanford v. Roche. The case is about who owned the patent for a PCR-based HIV detection kit. Dr. Mark Holodniy joined Stanford as a research fellow, and when he did, he signed a Patent Agreement stating that he will assign the right to inventions resulting from his employment at Stanford. In 88, Cetus began to collaborate with scientists at Stanford to test their HIV technology. Because Holodniy was unfamiliar with PCR, his supervisor arranged for him to conduct research at Cetus. The condition for this would be that Holodniy sign a Visitor’s Confidentiality Agreement which stated that he did presently assign to Cetus any right to any invention made as a consequence of his access to Cetus. So which agreement would hold? Stanford sued Roche (who bought out Cetus) for infringing. The Supreme Court, however, decided against Stanford upholding the agreement with Roche/Cetus as the valid one. The case has been somewhat complicated by a piece of legislation called the Baye-Dole Act which gives universities intellectual property control of their inventions that result from federally funded projects.

Today we have two interviews--the first with Dan Vorhaus and John Conley, the second with Kevin Noonan--to discuss the Stanford Roche decision as well as the ongoing Myriad Genetics which deals with the patentability of genes. We also discuss patent reform legislation before congress called the America Invents Act.