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

Toshiko Takenaka Prof., University of Washington - Seattle Campus

Abstract

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 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. This article 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.