Stanford’s lawsuit against biotechnology firm Roche Molecular Systems is about protecting inventors and University departments, not revenue, Provost John Etchemendy Ph.D. ’82 said Thursday.
Etchemendy’s comments came at the Faculty Senate meeting after the U.S. Supreme Court said Monday it would hear the case involving Stanford. The case will test the Bayh-Dole Act of 1980, which gives universities the rights to the federally funded inventions of faculty members.
He urged faculty to review the policy assigning rights to their inventions to Stanford.
“It’s not a policy really to protect the University,” Etchemendy said. “More than anything else, it’s a policy to protect you.”
Etchemendy defended the Bayh-Dole Act, calling it “good for the nation” because it helped good inventions get commercialized rather than “lost” within the government, he said.
The notion that universities profit from the act is misguided, Etchemendy said. Stanford receives $45 million to $60 million in patent revenue. “We’re on the upper end, and that’s on a $3.5 billion budget,” Etchemendy said. “It’s not a major source of revenue.”
He added that after costs are covered in the Stanford Office of Technology Licensing, one third of patent revenue goes to the faculty inventor, one third to his or her department and one third to the department’s school.
“This is not the University worrying about income to the University,” said Etchemendy, who is Stanford’s chief budgetary officer. “It’s really worrying about income to the department and the faculty member, and [Stanford is] very, very worried about the principle.”
The case arose from a dispute between Stanford and Roche over ownership of the patents of technology related to HIV test kits. In 1988, Stanford researcher Mark Holodniy signed over his patent ownership rights to Stanford, including patents on his research that was later used in the test kits. In 1989, he signed rights over to a firm called Cetus, which was later acquired by Roche. Other researchers were also involved.
The Supreme Court will decide whether or not an inventor at a university receiving federal funds can terminate the university’s patent rights by signing over rights to a third party.
The U.S. solicitor general, M.I.T. and others have filed briefs supporting Stanford. The issue is set to go before the court early next year.
Also at Thursday’s Faculty Senate meeting, professors Jim Campbell Ph.D. ‘89 and Susan McConnell gave the first of three reports on the Study of Undergraduate Education at Stanford, a task force they are co-chairing to examine and improve the undergraduate experience. University President John Hennessy followed up on a June talk in which he outlined long-term challenges facing Stanford. He noted on Thursday the progress Stanford has made on faculty diversity but urged attention to new, creative uses for technology in teaching.
The Faculty Senate next meets on Dec. 2.
Correction: In an earlier version of this story, The Daily incorrectly reported that the Stanford-Roche case arose from a dispute over ownership of the patents of HIV test kits. It fact, it arose over patented technology related to HIV test kits.