(Slip Opinion) OCTOBER TERM, 2010 1 

Syllabus 

NOTE: Where it is feasible, a syllabus (headnote) will be released, as is

being done in connection with this case, at the time the opinion is issued.

The syllabus constitutes no part of the opinion of the Court but has been

prepared by the Reporter of Decisions for the convenience of the reader. 

See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337. 

SUPREME COURT OF THE UNITED STATES 

Syllabus 

BOARD OF TRUSTEES OF THE LELAND STANFORD 

JUNIOR UNIVERSITY v. ROCHE MOLECULAR 

SYSTEMS, INC., ET AL. 

CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR 

THE FEDERAL CIRCUIT 

No. 09–1159. Argued February 28, 2011—Decided June 6, 2011 

In 1985, a small California research company called Cetus began to

develop methods for quantifying blood-borne levels of human immunodeficiency virus (HIV), the virus that causes AIDS. A Nobel Prize 

winning technique developed at Cetus known as PCR was an integral 

part of these efforts.

In 1988, Cetus began to collaborate with scientists at Stanford

University’s Department of Infectious Diseases to test the efficacy of 

new AIDS drugs. Dr. Holodniy joined Stanford as a research fellow 

in the department around that time. When he did so, he signed an

agreement stating that he “agree[d] to assign” to Stanford his “right, 

title and interest in” inventions resulting from his employment there. 

Holodniy’s supervisor arranged for him to conduct research at Cetus 

to learn about PCR. As a condition of gaining access to Cetus,

Holodniy was required to sign an agreement stating that he “will assign and do[es] hereby assign” to Cetus his “right, title and interest

in . . . the ideas, inventions, and improvements” made “as a consequence of [his] access” to Cetus. Working with Cetus employees,

Holodniy devised a PCR-based procedure for measuring the amount 

of HIV in a patient’s blood. Upon returning to Stanford, he and other 

Stanford employees tested the procedure. Stanford secured three 

patents to the measurement process. 

Roche Molecular Systems acquired Cetus’s PCR-related assets. 

After conducting clinical trials on the HIV quantification method developed at Cetus, Roche commercialized the procedure. Today, its

HIV test kits are used worldwide. 

The University and Small Business Patent Procedures Act of 1980 
2 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Syllabus 

(Bayh-Dole Act or Act) allocates rights in federally funded “subject

invention[s]” between the Federal Government and federal contractors. 35 U. S. C. §§201(e), (c), 202(a). The Act defines “subject invention” as “any invention of the contractor conceived or first actually

reduced to practice in the performance of work under a funding 

agreement,” §201(e), and provides that contractors may “elect to retain title to any subject invention,” §202(a). Because some of Stanford’s research on the HIV measurement technique was funded by 

the National Institutes of Health (NIH), the Bayh-Dole Act applied.

In accordance with the Act’s requirements, Stanford notified NIH 

that it was electing to retain title to the invention and conferred on 

the Government a license to use the patented procedure. 

Petitioner, the Board of Trustees of Stanford University, filed suit

against respondents (Roche), claiming that their HIV test kits infringed Stanford’s patents. Roche responded that Holodniy’s agreement with Cetus gave it co-ownership of the procedure, and thus 

Stanford lacked standing to sue it for patent infringement. Stanford 

countered that Holodniy had no rights to assign because the University had superior rights under the Bayh-Dole Act. The District Court 

agreed with Stanford and held that under the Bayh-Dole Act, Holodniy had no rights to assign to Cetus. The Court of Appeals for the

Federal Circuit disagreed, concluding that Holodniy’s agreement with

Cetus assigned his rights to Cetus, and thus to Roche. It also found 

that the Bayh-Dole Act did not automatically void an inventor’s 

rights in federally funded inventions. Thus, the Act did not extinguish Roche’s ownership interest in the invention, and Stanford was

deprived of standing. 

Held: The Bayh-Dole Act does not automatically vest title to federally

funded inventions in federal contractors or authorize contractors to 

unilaterally take title to such inventions. Pp. 6–15.

(a) Since 1790, patent law has operated on the premise that rights 

in an invention belong to the inventor. See, e.g., Gayler v. Wilder, 10 

How. 477, 493. In most cases, a patent may be issued only to an applying inventor, or—because an inventor’s interest in his invention is 

assignable in law by an instrument in writing—an inventor’s assignee. See United States v. Dubilier Condenser Corp., 289 U. S. 178, 

187. Absent an agreement to the contrary, an employer does not 

have rights in an invention “which is the original conception of the 

employee alone,” id., at 189; an inventor must expressly grant those 

rights to his employer, see id., at 187. Pp. 6–8.

(b) Stanford and amicus United States contend that, when an invention is conceived or first reduced to practice with the support of 

federal funds, the Bayh-Dole Act vests title to those inventions in the

inventor’s employer—the federal contractor. Congress has in the 
Cite as: 563 U. S. ____ (2011) 3 

Syllabus 

past divested inventors of their rights in inventions by providing unambiguously that inventions created pursuant to certain specified

federal contracts become the Government’s property. Such unambiguous language is notably absent from the Bayh-Dole Act. Instead, 

the Act provides that contractors may “elect to retain title to any subject invention,” §202(a), defining a “subject invention” as “any invention of the contractor conceived or first actually reduced to practice in

the performance of work under a funding agreement,” §201(e). 

Stanford contends that “invention of the contractor” means all inventions that a contractor’s employees make with the aid of federal

funds. That reading assumes that Congress subtly set aside two centuries of patent law in a statutory definition. This Court has rejected 

the idea that mere employment is sufficient to vest title to an employee’s invention in the employer. Stanford’s reading also renders

the phrase “of the contractor” superfluous since the definition already

covers inventions made under a funding agreement. Construing the

phrase to refer instead to a particular category of inventions conceived or reduced to practice under a funding agreement—inventions 

“of the contractor,” that is, those owned by or belonging to the contractor—makes the phrase meaningful in the statutory definition. 

And “invention owned by the contractor” or “invention belonging to 

the contractor” are natural readings of the phrase “invention of the

contractor.” 

Section 202(a), which states that contractors may “elect to retain

title,” confirms that the Act does not vest title. Stanford reaches the 

opposite conclusion, but only because it reads “retain” to mean “acquire” and “receive.” That is certainly not the common meaning of 

“retain,” which is “to hold or continue to hold in possession or use.” 

You cannot retain something unless you already have it. And 

§210(a)—which provides that the Act “take[s] precedence over any

other Act which would require a disposition of rights in subject inventions . . . that is inconsistent with” the Act—does not displace the basic principle that an inventor owns the rights to his invention. Only

when an invention belongs to the contractor does the Bayh-Dole Act 

come into play. The Act’s disposition of rights does nothing more

than clarify the order of priority of rights between the Federal Government and a federal contractor in a federally funded invention that 

already belongs to the contractor. 

The Act’s isolated provisions dealing with inventors’ rights in subject inventions are consistent with the Court’s construction of the Act. 

See §202(d). That construction is also bolstered by the Act’s limited

procedural protections, which expressly give contractors the right to 

challenge a Government-imposed impediment to retaining title to a 

subject invention, §202(b)(4), but do not provide similar protection for 
4 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Syllabus 

inventor and third-party rights. 

Stanford’s contrary construction would permit title to an employee’s inventions to vest in the University even if the invention was 

conceived before the inventor became an employee, so long as the invention’s reduction to practice was supported by federal funding. It 

also suggests that the school would obtain title were even one dollar

of federal funding applied toward an invention’s conception or reduction to practice. It would be noteworthy enough for Congress to supplant one of the fundamental precepts of patent law and deprive inventors of rights in their own inventions. To do so under such 

unusual terms would be truly surprising. Had Congress intended 

such a sea change in intellectual property rights it would have said so

clearly—not obliquely through an ambiguous definition of “subject 

invention” and an idiosyncratic use of the word “retain.” 

The Court’s construction of the Act is also reflected in the common 

practice of contractors, who generally obtain assignments from their 

employees, and of agencies that fund federal contractors, who typically expect those contractors to obtain assignments. With effective 

assignments, federally funded inventions become “subject inventions” 

and the Act as a practical matter works pretty much the way Stanford says it should. The only significant difference is that it does so

without violence to the basic patent law principle that inventors own 

their inventions. Pp. 8–15. 

583 F. 3d 832, affirmed. 

ROBERTS, C. J., delivered the opinion of the Court, in which SCALIA, 

KENNEDY, THOMAS, ALITO, SOTOMAYOR, and KAGAN, JJ., joined. SOTOMAYOR, J., filed a concurring opinion. BREYER, J., filed a dissenting 

opinion, in which GINSBURG, J., joined. 
_________________ 

_________________ 

Cite as: 563 U. S. ____ (2011) 1 

Opinion of the Court 

NOTICE: This opinion is subject to formal revision before publication in the

preliminary print of the United States Reports. Readers are requested to

notify the Reporter of Decisions, Supreme Court of the United States, Washington, D. C. 20543, of any typographical or other formal errors, in order

that corrections may be made before the preliminary print goes to press. 

SUPREME COURT OF THE UNITED STATES 

No. 09–1159 

BOARD OF TRUSTEES OF THE LELAND STANFORD 

JUNIOR UNIVERSITY, PETITIONER v. ROCHE 

MOLECULAR SYSTEMS, INC., ET AL. 

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF 

APPEALS FOR THE FEDERAL CIRCUIT

[June 6, 2011]

 CHIEF JUSTICE ROBERTS delivered the opinion of the

Court. 

Since 1790, the patent law has operated on the premise 

that rights in an invention belong to the inventor. The 

question here is whether the University and Small Business Patent Procedures Act of 1980—commonly referred to

as the Bayh-Dole Act—displaces that norm and automatically vests title to federally funded inventions in federal 

contractors. We hold that it does not. 

I 

A 

In 1985, a small California research company called

Cetus began to develop methods for quantifying bloodborne levels of human immunodeficiency virus (HIV), the

virus that causes AIDS. A Nobel Prize winning technique 

developed at Cetus—polymerase chain reaction, or PCR—

was an integral part of these efforts. PCR allows billions 

of copies of DNA sequences to be made from a small initial

blood sample. 

In 1988, Cetus began to collaborate with scientists at 
2 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

Stanford University’s Department of Infectious Diseases 

to test the efficacy of new AIDS drugs. Dr. Mark Holodniy 

joined Stanford as a research fellow in the department

around that time. When he did so, he signed a Copyright 

and Patent Agreement (CPA) stating that he “agree[d] to

assign” to Stanford his “right, title and interest in” inventions resulting from his employment at the University. 

App. to Pet. for Cert. 118a–119a. 

At Stanford Holodniy undertook to develop an improved 

method for quantifying HIV levels in patient blood samples, using PCR. Because Holodniy was largely unfamiliar 

with PCR, his supervisor arranged for him to conduct

research at Cetus. As a condition of gaining access to

Cetus, Holodniy signed a Visitor’s Confidentiality Agreement (VCA). That agreement stated that Holodniy “will 

assign and do[es] hereby assign” to Cetus his “right, title 

and interest in each of the ideas, inventions and improvements” made “as a consequence of [his] access” to Cetus. 

Id., at 122a–124a. 

For the next nine months, Holodniy conducted research

at Cetus. Working with Cetus employees, Holodniy devised a PCR-based procedure for calculating the amount of 

HIV in a patient’s blood. That technique allowed doctors

to determine whether a patient was benefiting from HIV 

therapy.

Holodniy then returned to Stanford where he and other 

University employees tested the HIV measurement technique. Over the next few years, Stanford obtained written

assignments of rights from the Stanford employees involved in refinement of the technique, including Holodniy, 

and filed several patent applications related to the procedure. Stanford secured three patents to the HIV measurement process.

In 1991, Roche Molecular Systems, a company that 

specializes in diagnostic blood screening, acquired Cetus’s

PCR-related assets, including all rights Cetus had ob-
Cite as: 563 U. S. ____ (2011) 3 

Opinion of the Court 

tained through agreements like the VCA signed by Holodniy. After conducting clinical trials on the HIV quantification method developed at Cetus, Roche commercialized the 

procedure. Today, Roche’s HIV test “kits are used in

hospitals and AIDS clinics worldwide.” Brief for Respondents 10–11. 

B 

In 1980, Congress passed the Bayh-Dole Act to “promote

the utilization of inventions arising from federally supported research,” “promote collaboration between commercial concerns and nonprofit organizations,” and “ensure 

that the Government obtains sufficient rights in federally

supported inventions.” 35 U. S. C. §200. To achieve these 

aims, the Act allocates rights in federally funded “subject

invention[s]” between the Federal Government and federal

contractors (“any person, small business firm, or nonprofit 

organization that is a party to a funding agreement”).

§§201(e), (c), 202(a). The Act defines “subject invention”

as “any invention of the contractor conceived or first actually reduced to practice in the performance of work under

a funding agreement.” §201(e).

The Bayh-Dole Act provides that contractors may “elect

to retain title to any subject invention.” §202(a). To be 

able to retain title, a contractor must fulfill a number of 

obligations imposed by the statute. The contractor must 

“disclose each subject invention to the [relevant] Federal

agency within a reasonable time”; it must “make a written

election within two years after disclosure” stating that 

the contractor opts to retain title to the invention; and the

contractor must “file a patent application prior to any

statutory bar date.” §§202(c)(1)–(3). The “Federal Government may receive title” to a subject invention if a

contractor fails to comply with any of these obligations. 

Ibid. 

The Government has several rights in federally funded 
4 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

subject inventions under the Bayh-Dole Act. The agency

that granted the federal funds receives from the contractor

“a nonexclusive, nontransferrable, irrevocable, paid-up 

license to practice . . . [the] subject invention.” §202(c)(4).

The agency also possesses “[m]arch-in rights,” which 

permit the agency to grant a license to a responsible third

party under certain circumstances, such as when the contractor fails to take “effective steps to achieve practical 

application” of the invention. §203. The Act further provides that when the contractor does not elect to retain title 

to a subject invention, the Government “may consider and 

after consultation with the contractor grant requests for 

retention of rights by the inventor.” §202(d).

Some of Stanford’s research related to the HIV measurement technique was funded by the National Institutes

of Health (NIH), thereby subjecting the invention to the 

Bayh-Dole Act. Accordingly, Stanford disclosed the invention, conferred on the Government a nonexclusive, 

nontransferable, paid-up license to use the patented procedure, and formally notified NIH that it elected to retain

title to the invention. 

C 

In 2005, the Board of Trustees of Stanford University 

filed suit against Roche Molecular Systems, Inc., Roche 

Diagnostics Corporation, and Roche Diagnostics Operations, Inc. (collectively Roche), contending that Roche’s

HIV test kits infringed Stanford’s patents. As relevant 

here, Roche responded by asserting that it was a co-owner 

of the HIV quantification procedure, based on Holodniy’s

assignment of his rights in the Visitor’s Confidentiality 

Agreement. As a result, Roche argued, Stanford lacked

standing to sue it for patent infringement. 487 F. Supp.

2d 1099, 1111, 1115 (ND Cal. 2007). Stanford claimed 

that Holodniy had no rights to assign because the University’s HIV research was federally funded, giving the school 
Cite as: 563 U. S. ____ (2011) 5 

Opinion of the Court 

superior rights in the invention under the Bayh-Dole Act. 

Ibid.1 

The District Court held that the “VCA effectively assigned any rights that Holodniy had in the patented invention to Cetus,” and thus to Roche. Id., at 1117. But 

because of the operation of the Bayh-Dole Act, “Holodniy 

had no interest to assign.” Id., at 1117, 1119. The court 

concluded that the Bayh-Dole Act “provides that the individual inventor may obtain title” to a federally funded 

invention “only after the government and the contracting

party have declined to do so.” Id., at 1118. 

The Court of Appeals for the Federal Circuit disagreed.

First, the court concluded that Holodniy’s initial agreement with Stanford in the Copyright and Patent Agreement constituted a mere promise to assign rights in the 

future, unlike Holodniy’s agreement with Cetus in the

Visitor’s Confidentiality Agreement, which itself assigned 

Holodniy’s rights in the invention to Cetus. See 583 F. 3d 

832, 841–842 (2009). Therefore, as a matter of contract 

law, Cetus obtained Holodniy’s rights in the HIV quantification technique through the VCA.2 Next, the court explained that the Bayh-Dole Act “does not automatically 

void ab initio the inventors’ rights in government-funded 

inventions” and that the “statutory scheme did not automatically void the patent rights that Cetus received from 

Holodniy.” Id., at 844–845. The court held that “Roche 

possesse[d] an ownership interest in the patents-in-suit” 

—————— 

1Roche submitted a host of other claims to the District Court, including that it had “shop rights” to the patents and was entitled to a license

to use the patents. See 583 F. 3d 832, 838 (CA Fed. 2009). None of 

those claims is now before us; we deal only with Roche’s claim to coownership to rebut Stanford’s standing to bring an infringement action. 2Because the Federal Circuit’s interpretation of the relevant assignment agreements is not an issue on which we granted certiorari, we 

have no occasion to pass on the validity of the lower court’s construction 

of those agreements. 
6 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

that was not extinguished by the Bayh-Dole Act, “depriv[ing] Stanford of standing.” Id., at 836–837. The 

Court of Appeals then remanded the case with instructions to dismiss Stanford’s infringement claim. Id., at 849. 

We granted certiorari. 562 U. S. ___ (2010). 

II 

A 

Congress has the authority “[t]o promote the Progress of

Science and useful Arts, by securing . . . to Authors and 

Inventors the exclusive Right to their respective Writings

and Discoveries.” U. S. Const. Art. I, §8, cl. 8. The first 

Congress put that power to use by enacting the Patent Act

of 1790. That Act provided “[t]hat upon the petition of any 

person or persons . . . setting forth, that he, she, or they,

hath or have invented or discovered” an invention, a patent could be granted to “such petitioner or petitioners” or 

“their heirs, administrators or assigns.” Act of Apr. 10, 

1790, §1, 1 Stat. 109–110. Under that law, the first patent

was granted in 1790 to Samuel Hopkins, who had devised 

an improved method for making potash, America’s first 

industrial chemical. U. S. Patent No. 1 (issued July 31, 

1790).3 

Although much in intellectual property law has changed

in the 220 years since the first Patent Act, the basic idea

that inventors have the right to patent their inventions 

has not. Under the law in its current form, “[w]hoever 

invents or discovers any new and useful process, machine,

manufacture, or composition of matter . . . may obtain a

patent therefor.” 35 U. S. C. §101. The inventor must 

attest that “he believes himself to be the original and first 

inventor of the [invention] for which he solicits a patent.” 

—————— 

3The patent was signed by President George Washington, Secretary 

of State Thomas Jefferson, and Attorney General Edmund Randolph.

See Maxey, Samuel Hopkins, The Holder of the First U. S. Patent: A 

Study of Failure, 122 Pa. Magazine of Hist. and Biography 6 (1998). 
Cite as: 563 U. S. ____ (2011) 7 

Opinion of the Court 

§115. In most cases, a patent may be issued only to an

applying inventor, or—because an inventor’s interest in

his invention is “assignable in law by an instrument in 

writing”—an inventor’s assignee. §§151, 152, 261. 

Our precedents confirm the general rule that rights in

an invention belong to the inventor. See, e.g., Gayler v. 

Wilder, 10 How. 477, 493 (1851) (“the discoverer of a new 

and useful improvement is vested by law with an inchoate 

right to its exclusive use, which he may perfect and make 

absolute by proceeding in the manner which the law requires”); Solomons v. United States, 137 U. S. 342, 346 

(1890) (“whatever invention [an inventor] may thus conceive and perfect is his individual property”); United 

States v. Dubilier Condenser Corp., 289 U. S. 178, 188 

(1933) (an inventor owns “the product of [his] original

thought”). The treatises are to the same effect. See, e.g., 8 

Chisum on Patents §22.01, p. 22–2 (2011) (“The presumptive owner of the property right in a patentable invention 

is the single human inventor”).

It is equally well established that an inventor can assign 

his rights in an invention to a third party. See Dubilier 

Condenser Corp., supra, at 187 (“A patent is property and 

title to it can pass only by assignment”); 8 Chisum on

Patents, supra, §22.01, at 22–2 (“The inventor . . . [may] 

transfer ownership interests by written assignment to 

anyone”). Thus, although others may acquire an interest 

in an invention, any such interest—as a general rule—

must trace back to the inventor. 

In accordance with these principles, we have recognized

that unless there is an agreement to the contrary, an

employer does not have rights in an invention “which is

the original conception of the employee alone.” Dubilier 

Condenser Corp., 289 U. S., at 189. Such an invention 

“remains the property of him who conceived it.” Ibid. In 

most circumstances, an inventor must expressly grant his 

rights in an invention to his employer if the employer is to 
8 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

obtain those rights. See id., at 187 (“The respective rights

and obligations of employer and employee, touching an

invention conceived by the latter, spring from the contract

of employment”). 

B 

Stanford and the United States as amicus curiae contend that the Bayh-Dole Act reorders the normal priority

of rights in an invention when the invention is conceived 

or first reduced to practice with the support of federal 

funds. In their view, the Act moves inventors from the 

front of the line to the back by vesting title to federally

funded inventions in the inventor’s employer—the federal

contractor. See Brief for Petitioner 26–27; Brief for United 

States as Amicus Curiae 6. 

Congress has in the past divested inventors of their

rights in inventions by providing unambiguously that 

inventions created pursuant to specified federal contracts 

become the property of the United States. For example,

with respect to certain contracts dealing with nuclear 

material and atomic energy, Congress provided that title 

to such inventions “shall be vested in, and be the property

of, the [Atomic Energy] Commission.” 42 U. S. C. §2182. 

Congress has also enacted laws requiring that title to 

certain inventions made pursuant to contracts with the

National Aeronautics and Space Administration “shall be 

the exclusive property of the United States,” Pub. L. 111–

314, §3, 124 Stat. 3339, 51 U. S. C. §20135(b)(1), and that 

title to certain inventions under contracts with the Department of Energy “shall vest in the United States.” 42 

U. S. C. §5908.

Such language is notably absent from the Bayh-Dole

Act. Nowhere in the Act is title expressly vested in contractors or anyone else; nowhere in the Act are inventors 

expressly deprived of their interest in federally funded 

inventions. Instead, the Act provides that contractors may 
Cite as: 563 U. S. ____ (2011) 9 

Opinion of the Court 

“elect to retain title to any subject invention.” 35 U. S. C. 

§202(a). A “subject invention” is defined as “any invention

of the contractor conceived or first actually reduced to 

practice in the performance of work under a funding

agreement.” §201(e).

Stanford asserts that the phrase “invention of the contractor” in this provision “is naturally read to include all

inventions made by the contractor’s employees with the 

aid of federal funding.” Brief for Petitioner 32 (footnote

omitted). That reading assumes that Congress subtly set 

aside two centuries of patent law in a statutory definition. 

It also renders the phrase “of the contractor” superfluous.

If the phrase “of the contractor” were deleted from the 

definition of “subject invention,” the definition would cover

“any invention . . . conceived or first actually reduced to 

practice in the performance of work under a funding

agreement.” Reading “of the contractor” to mean “all 

inventions made by the contractor’s employees with the 

aid of federal funding,” as Stanford would, adds nothing 

that is not already in the definition, since the definition 

already covers inventions made under the funding agreement. That is contrary to our general “reluctan[ce] to

treat statutory terms as surplusage.” Duncan v. Walker, 

533 U. S. 167, 174 (2001) (internal quotation marks 

omitted).

Construing the phrase to refer instead to a particular

category of inventions conceived or reduced to practice

under a funding agreement—inventions “of the contractor,” that is, those owned by or belonging to the contractor—makes the phrase meaningful in the statutory

definition. And “invention owned by the contractor” or

“invention belonging to the contractor” are natural readings of the phrase “invention of the contractor.” As we 

have explained, “[t]he use of the word ‘of’ denotes ownership.” Poe v. Seaborn, 282 U. S. 101, 109 (1930); see FloresFigueroa v. United States, 556 U. S. ___, ___, ___ 
10 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

(2009) (slip op., at 2, 11) (treating the phrase “identification [papers] of another person” as meaning such items 

belonging to another person (internal quotation marks

omitted)); Ellis v. United States, 206 U. S. 246, 259 (1907) 

(interpreting the phrase “works of the United States” to

mean “works belonging to the United States” (internal 

quotation marks omitted)). 

That reading follows from a common definition of the

word “of.” See Webster’s Third New International Dictionary 1565 (2002) (“of” can be “used as a function word 

indicating a possessive relationship”); New Oxford American Dictionary 1180 (2d ed. 2005) (defining “of” as “indicating an association between two entities, typically one of 

belonging”); Webster’s New Twentieth Century Dictionary 

1241 (2d ed. 1979) (defining “of” as “belonging to”).

Stanford’s reading of the phrase “invention of the contractor” to mean “all inventions made by the contractor’s

employees” is plausible enough in the abstract; it is often 

the case that whatever an employee produces in the course 

of his employment belongs to his employer. No one would 

claim that an autoworker who builds a car while working 

in a factory owns that car. But, as noted, patent law has 

always been different: We have rejected the idea that mere 

employment is sufficient to vest title to an employee’s 

invention in the employer. Against this background, a 

contractor’s invention—an “invention of the contractor”— 

does not automatically include inventions made by the 

contractor’s employees.4 

—————— 

4The dissent suggests that “we could interpret the Bayh-Dole Act as

ordinarily assuming, and thereby ordinarily requiring, an assignment

of patent rights by the federally funded employee to the federally 

funded employer.” Post, at 8. That suggestion is based in large part on

Executive Order 10096, which “governs Federal Government employeeto-employer patent right assignments.” Post, at 9. Lest there be any

doubt, employees of nonfederal entities that have federal funding 

contracts—like Holodniy—are not federal employees. And there is no 
Cite as: 563 U. S. ____ (2011) 11 

Opinion of the Court 

The Bayh-Dole Act’s provision stating that contractors 

may “elect to retain title” confirms that the Act does not 

vest title. 35 U. S. C. §202(a) (emphasis added). Stanford 

reaches the opposite conclusion, but only because it reads

“retain” to mean “acquire” and “receive.” Brief for Petitioner 36 (internal quotation marks omitted). That is 

certainly not the common meaning of “retain.” “[R]etain”

means “to hold or continue to hold in possession or use.” 

Webster’s Third, supra, at 1938; see Webster’s New Collegiate Dictionary 980 (1980) (“to keep in possession or 

use”); American Heritage Dictionary 1109 (1969) (“[t]o

keep or hold in one’s possession”). You cannot retain 

something unless you already have it. See Alaska v. 

United States, 545 U. S. 75, 104 (2005) (interpreting the

phrase “the United States shall retain title to all property”

to mean that “[t]he United States . . . retained title to its 

property located within Alaska’s borders”) (emphasis 

added). The Bayh-Dole Act does not confer title to federally funded inventions on contractors or authorize contractors to unilaterally take title to those inventions; it simply

assures contractors that they may keep title to whatever it

is they already have. Such a provision makes sense in a 

statute specifying the respective rights and responsibilities of federal contractors and the Government. 

The Bayh-Dole Act states that it “take[s] precedence

over any other Act which would require a disposition of

rights in subject inventions . . . that is inconsistent with”

the Act. 35 U. S. C. §210(a). The United States as amicus 

curiae argues that this provision operates to displace the

basic principle, codified in the Patent Act, that an inventor 

owns the rights to his invention. See Brief for United 

States 21. But because the Bayh-Dole Act, including 

—————— 

equivalent executive order governing invention rights with respect to 

federally funded research; that issue is of course addressed by the 

Bayh-Dole Act. 
12 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

§210(a), applies only to “subject inventions”—“inventions

of the contractor”—it does not displace an inventor’s antecedent title to his invention. Only when an invention 

belongs to the contractor does the Bayh-Dole Act come into

play. The Act’s disposition of rights—like much of the 

rest of the Bayh-Dole Act—serves to clarify the order of

priority of rights between the Federal Government and a 

federal contractor in a federally funded invention that

already belongs to the contractor. Nothing more.5 

The isolated provisions of the Bayh-Dole Act dealing 

with inventors’ rights in subject inventions are consistent 

with our construction of the Act. Under the Act, a federal 

agency may “grant requests for retention of rights by the 

inventor . . . [i]f a contractor does not elect to retain title to

a subject invention.” §202(d). If an employee inventor

never had title to his invention because title vested in the 

contractor by operation of law—as Stanford submits—it 

would be odd to allow the Government to grant “requests 

for retention of rights by the inventor.” By using the word 

“retention,” §202(d) assumes that the inventor had rights 

in the subject invention at some point, undermining the 

notion that the Act automatically vests title to federally 

funded inventions in federal contractors.6 

—————— 

5Far from superseding the Patent Act in such a backhanded way, it is

clear that §210(a)’s concern is far narrower. That provision specifies 21

different statutory provisions that the Bayh-Dole Act “take[s] precedence over,” the vast majority of which deal with the division of ownership in certain inventions between a contractor and the Government. 

35 U. S. C. §§210(a)(1)–(21); see, e.g., §§210(a)(19)–(20) (the Bayh-Dole 

Act takes precedence over “section 6(b) of the Solar Photovoltaic Energy

Research Development and Demonstration Act” and “section 12 of the 

Native Latex Commercialization and Economic Development Act”). 6Stanford contends that it cannot be the case “that the contractor can 

only ‘retain title’ to an invention that it already owns, while an inventor

may be considered for ‘retention’ of title only when he has assigned title 

away.” Reply Brief for Petitioner 8. That argument has some force. 

But there may be situations where an inventor, by the terms of an 
Cite as: 563 U. S. ____ (2011) 13 

Opinion of the Court 

The limited scope of the Act’s procedural protections 

also bolsters our conclusion. The Bayh-Dole Act expressly 

confers on contractors the right to challenge a Government-imposed impediment to retaining title to a subject

invention. §202(b)(4). As Roche correctly notes, however,

“the Act contains not a single procedural protection for 

third parties that have neither sought nor received federal 

funds,” such as cooperating private research institutions.

Brief for Respondents 29. Nor does the Bayh-Dole Act 

allow inventors employed by federal contractors to contest 

their employer’s claim to a subject invention. The Act, for 

example, does not expressly permit an interested third

party or an inventor to challenge a claim that a particular 

invention was supported by federal funding. In a world in 

which there is frequent collaboration between private 

entities, inventors, and federal contractors, see Brief for 

Pharmaceutical Research and Manufacturers of America 

as Amicus Curiae 22–23, that absence would be deeply 

troubling. But the lack of procedures protecting inventor 

and third-party rights makes perfect sense if the Act 

applies only when a federal contractor has already acquired title to an inventor’s interest. In that case, there is 

no need to protect inventor or third-party rights, because 

the only rights at issue are those of the contractor and the 

Government. 

The Bayh-Dole Act applies to subject inventions “conceived or first actually reduced to practice in the performance of work” “funded in whole or in part by the Federal 

Government.” 35 U. S. C. §§201(e), 201(b) (emphasis 

added). Under Stanford’s construction of the Act, title to 

—————— 

assignment, has subsidiary rights in an invention to which a contractor

has title, as §202(d) suggests. Compare §202(d) (“retention of rights”)

with §202(a) (“retain title”) (emphasis added). And at the end of the 

day, it is Stanford’s contention that “retain” must be “read as a synonym for ‘acquire’ or ‘receive’ ” that dooms its argument on this point.

Brief for Petitioner 37. 
14 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

Opinion of the Court 

one of its employee’s inventions could vest in the University even if the invention was conceived before the inventor became a University employee, so long as the invention’s reduction to practice was supported by federal 

funding. What is more, Stanford’s reading suggests that

the school would obtain title to one of its employee’s inventions even if only one dollar of federal funding was applied 

toward the invention’s conception or reduction to practice. 

It would be noteworthy enough for Congress to supplant 

one of the fundamental precepts of patent law and deprive 

inventors of rights in their own inventions. To do so under 

such unusual terms would be truly surprising. We are 

confident that if Congress had intended such a sea change

in intellectual property rights it would have said so

clearly—not obliquely through an ambiguous definition of 

“subject invention” and an idiosyncratic use of the word 

“retain.” Cf. Whitman v. American Trucking Assns., Inc., 

531 U. S. 457, 468 (2001) (“Congress . . . does not alter

the fundamental details of a regulatory scheme in vague 

terms or ancillary provisions”). 

Though unnecessary to our conclusion, it is worth noting 

that our construction of the Bayh-Dole Act is reflected in 

the common practice among parties operating under the 

Act. Contractors generally institute policies to obtain 

assignments from their employees. See Brief for Respondents 34; Brief for Pharmaceutical Research and Manufacturers of America as Amicus Curiae 13–18. Agencies that 

grant funds to federal contractors typically expect those 

contractors to obtain assignments. So it is with NIH, the 

agency that granted the federal funds at issue in this case. 

In guidance documents made available to contractors, NIH 

has made clear that “[b]y law, an inventor has initial 

ownership of an invention” and that contractors should

therefore “have in place employee agreements requiring 

an inventor to ‘assign’ or give ownership of an invention to 

the organization upon acceptance of Federal funds.” NIH 
Cite as: 563 U. S. ____ (2011) 15 

Opinion of the Court 

Policies, Procedures, and Forms, A “20–20” View of Invention Reporting to the National Institutes of Health (Sept. 

22, 1995). Such guidance would be unnecessary if Stanford’s reading of the statute were correct. 

Stanford contends that reading the Bayh-Dole Act as 

not vesting title to federally funded inventions in federal 

contractors “fundamentally undermin[es]” the Act’s framework and severely threatens its continued “successful

application.” Brief for Petitioner 45. We do not agree. As 

just noted, universities typically enter into agreements

with their employees requiring the assignment to the 

university of rights in inventions. With an effective assignment, those inventions—if federally funded—become

“subject inventions” under the Act, and the statute as a

practical matter works pretty much the way Stanford says

it should. The only significant difference is that it does so 

without violence to the basic principle of patent law that

inventors own their inventions. 

The judgment of the Court of Appeals for the Federal 

Circuit is affirmed. 

It is so ordered. 
_________________ 

_________________ 

Cite as: 563 U. S. ____ (2011) 1 

SOTOMAYOR, J., concurring 

SUPREME COURT OF THE UNITED STATES 

No. 09–1159 

BOARD OF TRUSTEES OF THE LELAND STANFORD 

JUNIOR UNIVERSITY, PETITIONER v. ROCHE 

MOLECULAR SYSTEMS, INC., ET AL. 

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF 

APPEALS FOR THE FEDERAL CIRCUIT

[June 6, 2011]

 JUSTICE SOTOMAYOR, concurring. 

I agree with the Court’s resolution of this case and with

its reasoning. I write separately to note that I share 

JUSTICE BREYER’s concerns as to the principles adopted by

the Court of Appeals for the Federal Circuit in FilmTec 

Corp. v. Allied-Signal, Inc., 939 F. 2d 1568 (1991), and the

application of those principles to agreements that implicate the Bayh-Dole Act. See post, at 6–10 (dissenting 

opinion). Because Stanford failed to challenge the decision 

below on these grounds, I agree that the appropriate

disposition is to affirm. Like the dissent, however, I understand the majority opinion to permit consideration of 

these arguments in a future case. See ante, at 5, n. 2. 
_________________ 

_________________ 

Cite as: 563 U. S. ____ (2011) 1 

BREYER, J., dissenting 

SUPREME COURT OF THE UNITED STATES 

No. 09–1159 

BOARD OF TRUSTEES OF THE LELAND STANFORD 

JUNIOR UNIVERSITY, PETITIONER v. ROCHE 

MOLECULAR SYSTEMS, INC., ET AL. 

ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF 

APPEALS FOR THE FEDERAL CIRCUIT

[June 6, 2011]

 JUSTICE BREYER, with whom JUSTICE GINSBURG joins,

dissenting. 

The question presented in this case is: 

“Whether a federal contractor university’s statutory

right under the Bayh-Dole Act, 35 U. S. C. §§200–212, 

in inventions arising from federally funded research 

can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.” Brief for 

Petitioner i. 

In my view, the answer to this question is likely no. But 

because that answer turns on matters that have not been 

fully briefed (and are not resolved by the opinion of the

Court), I would return this case to the Federal Circuit for 

further argument. 

I 

The Bayh-Dole Act creates a three-tier system for patent

rights ownership applicable to federally funded research 

conducted by nonprofit organizations, such as universities,

and small businesses. It sets forth conditions that mean 

(1) the funded firm; (2) failing that, the United States

Government; and (3) failing that, the employee who made 
2 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

BREYER, J., dissenting 

the invention, will likely obtain (or retain) any resulting patent rights (normally in that just-listed order). 35 

U. S. C. §§202–203. The statute applies to “subject invention[s]” defined as “any invention of the contractor 

conceived or first actually reduced to practice in the performance of work under a funding agreement.” §201(e)

(emphasis added). Since the “contractor” (e.g., a university or small business) is unlikely to “conceiv[e]” of an idea

or “reduc[e]” it “to practice” other than through its employees, the term “invention of the contractor” must refer 

to the work and ideas of those employees. We all agree

that the term covers those employee inventions that the

employee properly assigns to the contractor, i.e., his or 

her employer. But does the term “subject invention” 

also include inventions that the employee fails to assign 

properly? 

II 

Congress enacted this statute against a background 

norm that often, but not always, denies individual inventors patent rights growing out of research for which the

public has already paid. This legal norm reflects the fact

that patents themselves have both benefits and costs. 

Patents, for example, help to elicit useful inventions and 

research and to assure public disclosure of technological

advances. See, e.g., Mazer v. Stein, 347 U. S. 201, 219 

(1954); Bilski v. Kappos, 561 U. S. ___, ___ (2010) (slip op., 

at 4); id., at ___ (slip op., at 10) (Stevens, J., concurring in

judgment). But patents sometimes mean unnecessarily

high prices or restricted dissemination; and they sometimes discourage further innovation and competition by requiring costly searches for earlier, related patents or by

tying up ideas, which, were they free, would more effectively spur research and development. See, e.g., Laboratory Corp. of America Holdings v. Metabolite Laboratories, 

Inc., 548 U. S. 124, 128 (2006) (BREYER, J., dissenting 
Cite as: 563 U. S. ____ (2011) 3 

BREYER, J., dissenting 

from dismissal of certiorari as improvidently granted); 

Heller & Eisenberg, Can Patents Deter Innovation? The

Anticommons in Biomedical Research, 280 Science 698 

(1998).

Thus, Thomas Jefferson wrote of “the difficulty of drawing a line between the things which are worth to the public the embarrassment of an exclusive patent, and those 

which are not.” Letter to Isaac McPherson (Aug. 13, 

1813), in 6 Writings of Thomas Jefferson 181 (H. Washington ed. 1854). And James Madison favored the patent 

monopoly because it amounted to “compensation for” a

community “benefit.” Monopolies. Perpetuities. Corporations. Ecclesiastical Endowments., in J. Madison, Writings 

756 (J. Rakove ed. 1999). 

The importance of assuring this community “benefit” is

reflected in legal rules that may deny or limit the award of 

patent rights where the public has already paid to produce 

an invention, lest the public bear the potential costs of

patent protection where there is no offsetting need for

such protection to elicit that invention. Why should the

public have to pay twice for the same invention?

Legal rules of this kind include an Executive Order that

ordinarily gives to the Government “the entire right, title 

and interest” to inventions made by Government employees who “conduct or perform research, development work,

or both.” 37 CFR §501.6 (2010) (codifying, as amended, 

Exec. Order 10096, 3 CFR 292 (1949–1953 Comp.)). See 

also Heinemann v. United States, 796 F. 2d 451, 455–456 

(CA Fed. 1986) (holding Executive Order constitutional 

and finding “no ‘taking’ because the invention was not the 

property of Heinemann”). They also include statutes, 

which, in specific research areas, give the Government

title to inventions made pursuant to Government contracts. See Atomic Energy Act of 1954, §152, 68 Stat. 944

(codified as amended at 42 U. S. C. §2182); National Aeronautics and Space Act of 1958, §305, 72 Stat. 435 (codified 
4 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

BREYER, J., dissenting 

at 42 U. S. C. §2457), repealed by §6, 124 Stat. 3444; 

Federal Nonnuclear Energy Research and Development 

Act of 1974, §9, 88 Stat. 1887 (codified as amended at 42

U. S. C. §5908(a)). And they have included Government 

regulations, established prior to the Bayh-Dole Act’s enactment, that work in roughly similar ways. See, e.g., 45 

CFR §650.4(b) (1977) (National Science Foundation regulations providing that Foundation would “determine the

disposition of the invention [made under the grant] and 

title to and rights under any patent application”); §§8.1(a),

8.2(d) (Department of Health, Education, and Welfare

regulations providing that inventions made under department grants “shall be subject to determination” by the

agency and that the department may “require that all 

domestic rights in the invention shall be assigned to the 

United States”).

These legal rules provide the basic background against 

which Congress passed the Bayh-Dole Act. And the Act’s 

provisions reflect a related effort to assure that rights to

inventions arising out of research for which the public has 

paid are distributed and used in ways that further specific 

important public interests. I agree with the majority that

the Act does not simply take the individual inventors’ 

rights and grant them to the Government. Rather, it 

assumes that the federal funds’ recipient, say a university

or small business, will possess those rights. The Act 

leaves those rights in the hands of that recipient, not 

because it seeks to make the public pay twice for the same 

invention, but for a special public policy reason. In doing

so, it seeks to encourage those institutions to commercialize inventions that otherwise might not realize their potentially beneficial public use. 35 U. S. C. §200. The Act 

helps assure that commercialization (while “promot[ing]

free competition” and “protect[ing] the public,” ibid.) by

imposing a set of conditions upon the federal funds recipient, by providing that sometimes the Government will 
Cite as: 563 U. S. ____ (2011) 5 

BREYER, J., dissenting 

take direct control of the patent rights, and by adding that 

on occasion the Government will permit the individual

inventor to retain those rights. §§202–203.

Given this basic statutory objective, I cannot so easily 

accept the majority’s conclusion—that the individual inventor can lawfully assign an invention (produced by

public funds) to a third party, thereby taking that invention out from under the Bayh-Dole Act’s restrictions, 

conditions, and allocation rules. That conclusion, in my

view, is inconsistent with the Act’s basic purposes. It may

significantly undercut the Act’s ability to achieve its objectives. It allows individual inventors, for whose invention 

the public has paid, to avoid the Act’s corresponding restrictions and conditions. And it makes the commercialization and marketing of such an invention more difficult: 

A potential purchaser of rights from the contractor, say a

university, will not know if the university itself possesses 

the patent right in question or whether, as here, the individual, inadvertently or deliberately, has previously assigned the title to a third party. 

Moreover, I do not agree that the language to which the

majority points—the words “invention of the contractor”

and “retain”—requires its result. As the majority concedes, Stanford’s alternative reading of the phrase “‘invention of the contractor’” is “plausible enough in the 

abstract.” Ante, at 10. Nor do I agree that the Act’s lack 

of an explicit provision for “an interested third party” to

claim that an invention was not the result of federal funding “bolsters” the majority’s interpretation. Ante, at 13. 

In any event, universities and businesses have worked out

ways to protect the various participants to research. See 

Brief for Association of American Universities et al. as 

Amici Curiae 22–24 (hereinafter AAU Brief); App. 118–

124 (Materials Transfer Agreement between Cetus and 

Stanford University).

Ultimately, the majority rejects Stanford’s reading (and 
6 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

BREYER, J., dissenting 

the Government’s reading) of the Act because it believes

that it is inconsistent with certain background norms of 

patent law, norms that ordinarily provide an individual 

inventor with full patent rights. Ante, at 10. But in my

view, the competing norms governing rights in inventions 

for which the public has already paid, along with the 

Bayh-Dole Act’s objectives, suggest a different result. 

III 

There are two different legal routes to what I consider

an interpretation more consistent with the statute’s objectives. First, we could set aside the Federal Circuit’s interpretation of the licensing agreements and its related

licensing doctrine. That doctrine governs interpretation of

licensing agreements made before an invention is conceived or reduced to practice. Here, there are two such 

agreements. In the earlier agreement—that between Dr. 

Holodniy and Stanford University—Dr. Holodniy said, “I 

agree to assign . . . to Stanford . . . that right, title and 

interest in and to . . . such inventions as required by Contracts and Grants.” App. to Pet. for Cert. 119a (emphasis

added). In the later agreement—that between Dr. Holodniy and the private research firm Cetus—Dr. Holodniy 

said, “I will assign and do hereby assign to Cetus, my

right, title, and interest in” here relevant “ideas” and 

“inventions.” Id., at 123a (emphasis added; capitalization 

omitted).

The Federal Circuit held that the earlier Stanford agreement’s use of the words “agree to assign,” when compared 

with the later Cetus agreement’s use of the words “do 

hereby assign,” made all the difference. It concluded that, 

once the invention came into existence, the latter words 

meant that the Cetus agreement trumped the earlier, 

Stanford agreement. 583 F. 3d 832, 841–842 (CA Fed. 

2009). That, in the Circuit’s view, is because the latter 

words operated upon the invention automatically, while 
Cite as: 563 U. S. ____ (2011) 7 

BREYER, J., dissenting 

the former did not. Quoting its 1991 opinion in FilmTec 

Corp. v. Allied-Signal, Inc., 939 F. 2d 1568, 1572, the 

Circuit declared that “‘[o]nce the invention is made and 

[the] application for [a] patent is filed, . . . legal title to the 

rights accruing thereunder would be in the assignee [i.e., 

Cetus] . . . , and the assignor-inventor would have nothing 

remaining to assign.’” 583 F. 3d, at 842. 

Given what seem only slight linguistic differences in the

contractual language, this reasoning seems to make too 

much of too little. Dr. Holodniy executed his agreement 

with Stanford in 1988. At that time, patent law appears

to have long specified that a present assignment of future

inventions (as in both contracts here) conveyed equitable, 

but not legal, title. See, e.g., G. Curtis, A Treatise on the 

Law of Patents for Useful Inventions §170, p. 155 (3d ed.

1867) (“A contract to convey a future invention . . . cannot 

alone authorize a patent to be taken by the party in whose

favor such a contract was intended to operate”); Comment,

Contract Rights as Commercial Security: Present and

Future Intangibles, 67 Yale L. J. 847, 854, n. 27 (1958) 

(“The rule generally applicable grants equitable enforcement to an assignment of an expectancy but demands a

further act, either reduction to possession or further assignment of the right when it comes into existence”).

Under this rule, both the initial Stanford and later 

Cetus agreements would have given rise only to equitable 

interests in Dr. Holodniy’s invention. And as between 

these two claims in equity, the facts that Stanford’s contract came first and that Stanford subsequently obtained a

postinvention assignment as well should have meant that

Stanford, not Cetus, would receive the rights its contract

conveyed.

In 1991, however, the Federal Circuit, in FilmTec, 

adopted the new rule quoted above—a rule that distinguishes between these equitable claims and, in effect, says

that Cetus must win. The Federal Circuit provided no 
8 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

BREYER, J., dissenting 

explanation for what seems a significant change in the

law. See 939 F. 2d, at 1572. Nor did it give any explanation for that change in its opinion in this case. See 583 

F. 3d, at 841–842. The Federal Circuit’s FilmTec rule 

undercuts the objectives of the Bayh-Dole Act. While the 

cognoscenti may be able to meet the FilmTec rule in future 

contracts simply by copying the precise words blessed by

the Federal Circuit, the rule nonetheless remains a technical drafting trap for the unwary. See AAU Brief 35–36. 

But cf. ante, at 15 (assuming ease of obtaining effective

assignments). It is unclear to me why, where the BayhDole Act is at issue, we should prefer the Federal Circuit’s 

FilmTec rule to the rule, of apparently much longer vintage, that would treat both agreements in this case as

creating merely equitable rights.

At the same time, the Federal Circuit’s reasoning brings

about an interpretation contrary to the intention of the 

parties to the earlier, Stanford, contract. See App. to Pet.

for Cert. 120a (provision in Stanford contract promising 

that Dr. Holodniy “will not enter into any agreement 

creating copyright or patent obligations in conflict with

this agreement”). And it runs counter to what may well 

have been the drafters’ reasonable expectations of how

courts would interpret the relevant language. 

Second, we could interpret the Bayh-Dole Act as ordinarily assuming, and thereby ordinarily requiring, an

assignment of patent rights by the federally funded employee to the federally funded employer. I concede that 

this interpretation would treat federally funded employees 

of contractors (subject to the Act) differently than the law

ordinarily treats private sector employees. The Court long

ago described the latter, private sector principles. In 

United States v. Dubilier Condenser Corp., 289 U. S. 178 

(1933), the Court explained that a “patent is property, and 

title to it can pass only by assignment.” Id., at 187. It 

then described two categories of private sector employee-
Cite as: 563 U. S. ____ (2011) 9 

BREYER, J., dissenting 

to-employer assignments as follows: First, a person who is 

“employed to make an invention, who succeeds, during his term of service, in accomplishing that task, is

bound to assign to his employer any patent obtained.” 

Ibid. 

But, second, 

“if the employment be general, albeit it cover a field of

labor and effort in the performance of which the employee conceived the invention for which he obtained a 

patent, the contract is not so broadly construed as to 

require an assignment of the patent.” Ibid. 

The Court added that, because of “the peculiar nature of 

the act of invention,” courts are “reluctan[t] . . . to imply or

infer an agreement by the employee to assign his patent.” 

Id., at 188. And it applied these same principles governing assignment to inventions made by employees of the 

United States. Id., at 189–190. 

Subsequently, however, the President promulgated 

Executive Order 10096. Courts have since found that this 

Executive Order, not Dubilier, governs Federal Government employee-to-employer patent right assignments.

See, e.g., Kaplan v. Corcoran, 545 F. 2d 1073, 1076–1077 

(CA7 1976); Heinemann, 796 F. 2d, at 455–456; Wright v. 

United States, 164 F. 3d 267, 269 (CA5 1999); Halas v. 

United States, 28 Fed. Cl. 354, 364 (1993). The Bayh-Dole 

Act seeks objectives roughly analogous to the objectives of 

the Executive Order. At least one agency has promulgated 

regulations that require Bayh-Dole contractors to insist

upon similar assignments. See NIH Policies, Procedures, 

and Forms, A “20–20” View of Invention Reporting to the 

National Institutes of Health (Sept. 22, 1995) (available in

the Clerk of Court’s case file) (requiring a Government 

contractor, such as Stanford University, to “have in place 

employee agreements requiring an inventor to ‘assign’ or 
10 BOARD OF TRUSTEES OF LELAND STANFORD JUNIOR 

UNIV. v. ROCHE MOLECULAR SYSTEMS, INC. 

BREYER, J., dissenting 

give ownership of an invention to the organization upon 

acceptance of Federal funds,” as the Bayh-Dole Act “require[s]”). And an amicus brief, filed by major associations of universities, scientists, medical researchers, and 

others, argues that we should interpret the rules governing assignments of the employees at issue here (and

consequently the Act’s reference to “inventions of the contractor”) in a similar way. AAU Brief 5–14. 

The District Court in this case adopted roughly this

approach. 487 F. Supp. 2d 1099, 1118 (ND Cal. 2007) 

(“[A]lthough title still vests in the named inventor, the

inventor remains under a legal obligation to assign his 

interest either to the government or the nonprofit contractor unless the inventor acts within the statutory framework to retain title”). And since a university often enters

into a grant agreement with the Government for a researcher’s benefit and at his request, see J. Hall, Grant 

Management 205 (2010), implying such a presumption in 

favor of compliance with the grant agreement, and thus

with the Bayh-Dole Act, would ordinarily be equitable. 

IV 

As I have suggested, these views are tentative. That is 

because the parties have not fully argued these matters 

(though one amicus brief raises the license interpretation

question, see Brief for Alexander M. Shukh as Amicus 

Curiae 18–24, and at least one other can be read as supporting something like the equitable presumption I have 

described, see AAU Brief 5–14). Cf. ante, at 5, n. 2. While 

I do not understand the majority to have foreclosed a 

similarly situated party from raising these matters in a 

future case, see ibid., I believe them relevant to our efforts 

to answer the question presented here. Consequently, I 

would vacate the judgment of the Federal Circuit and

remand this case to provide the parties with an opportunity to argue these, or related, matters more fully. 
Cite as: 563 U. S. ____ (2011) 11 

BREYER, J., dissenting 

Because the Court decides otherwise, with respect, I

dissent.