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IP in Joint Ventures with Universities or Nonprofits

In his FY2010 budget, President Obama requested approximately $147 billion of federal funding designated for research and development purposes.1 It is likely that inventions having significant commercial implications will arise from these funds. The Bayh-Dole Act of 19802 regulates the manner in which such inventions can be patented, licensed and commercialized. The United States Supreme Court recently heard oral arguments in Stanford v. Roche, Docket No. 09-1159, a case regarding the Bayh-Dole Act that will have major implications regarding the disposition of federally funded inventions. The specific facts of the case provide several lessons learned for the in-house attorney responsible for managing development and licensing of such federally funded inventions. This article will look at the facts of the case and how in-house counsel can protect her client and avoid future issues regardless of the decision by the Supreme Court.

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