Serious Flaw of Employee Invention Ownership under the Bayh-Dole Act in Stanford v. Roche: Finding the Missing Piece of the Puzzle in the German Employee Invention Act, 20 Tex. Intell. Prop. L.J. 281-326 (2012).
In Stanford v. Roche, the Supreme Court highlighted a serious flaw of employee invention ownership under the Bayh-Dole Act (BDA). This article argues that the current BDA is incomplete without a mechanism for contractors to secure the ownership of all federally funded inventions and proposes a revision to introduce such a mechanism. Universities' failure to execute an express assignment will subject federally funded inventions to the common law ownership rules, which would not give the ownership to universities. Even with a written assignment, the different state laws and state legislation prevent contractors from securing the ownership of all federally funded inventions, thereby preventing the federal government from implementing a uniform policy. Therefore, this article proposes to adopt a mechanism for contractors to secure the ownership of federally funded inventions from the German Employee Invention Act (EIA). Because the EIA influenced the drafting of the BDA, the EIA and BDA share key features, which make it easy for the BDA to adopt an ownership transfer mechanism from the EIA. It also proposes to adopt a mechanism to protect inventors‟ rights for compensation from the EIA so that contractors can secure the ownership of federally funded inventions not only from their employees but also non-employees with just compensation through royalty sharing without a violation of the Fifth Amendment. --Abstract from the SSRN posting