Attribution Error

Originally posted Mar 2011

Q: What happens when a professor visits a corporation and devises a groundbreaking AIDS test? A: Chaos.

On Monday, the Supreme Court of the United States head arguments in Stanford v. Roche, a case that will likely lay the first significant amount of case law regarding the transfer of patents from universities to corporations. The dispute centers on a patented method of testing patients for AIDS, developed by Stanford professor Mark Holodniy while working with Cetus, which later sold the patents to Roche. Dr. Holodniy apparently signed a document that assigned rights for any of his discoveries to Cetus before beginning a collaborative effort with them.

It seems open and shut from here—the man signed a contract. However, the collaboration was federally-funded, it appears, and that changes everything. The 1980 Bayh-Dole Act allows universities to retain (and sell) rights to discoveries they make as a result of federally-funded projects, and has no provision for individuals to waive those rights on behalf of the university. In fact, the Bayh in Bayh-Dole, former Indiana senator Birch Bayh, sides with Stanford, as does the Department of Justice.

What’s interesting about this case is that Dr. Holodniy actually learned some of the essential process from Cetus. According to the Silicon Valley Mercury News, Holodniy learned the process of polymerase chain reactions (PCR) at the Cetus facility, according to the Mercury News report. As the AIDS test Holodniy developed requires PCR as part of the procedure, it seems that no matter who wins this case, justice will not be served.

Let me explain why I say that. Dr. Holodniy clearly joined Stanford University first, and signed away all of his inventions to the university, then joined the visiting scientist program at Cetus as a representative of Stanford. Clearly holding in favor of Roche would be unfair to Stanford, as Holodniy’s contracts with the university are clear. However, the test was designed at the Cetus facility, using equipment and expertise that originated with the company, so finding for Stanford would be unfair to Roche, and to Cetus, who made money by selling the testing products.

Catherine Fisk, law professor at Duke University wrote a paper on attribution of inventions, which points to the way to fix this problem: “The criteria for granting credit should be relatively transparent or publicly known. Transparency motivates people to do the work to earn credit and enables people to conform their conduct so as to avoid blame.” In this case, the criteria for assigning rights to inventions produced during the collaboration should have been made clear beforehand, and any companies and universities engaging in visiting scientist programs should have the foresight to put it in writing before that professor crosses the threshold of that company.

What do you think? Is that even reasonable, or should universities rely on Bayh-Dole to maintain their intellectual property? Whose side do you take? Let me know in the comments.