• Paper, Scissors, Rock: How a Professor’s Pen Smashed Stanford University’s Piece of the Rock
  • December 17, 2010 | Authors: Jordan B. Edwards; David B. McKinney; Paul E. Rossler
  • Law Firm: GableGotwals - Tulsa Office
  • Despite a guarantee of lifetime employment and flexible working hours, most tenured university professors are like most other private-sector employees when it comes to ownership of the intellectual property created during employment. In exchange for employment, the employee (professor) agrees to transfer ownership of anything he or she invents while employed to the employer (university). In legalese, this kind of transfer is called an assignment. Stanford University thought that researcher Dr. Mark Holodniy had made an assignment to it in June 1988 when Holodniy joined Stanford University as a Research Fellow and signed a “Copyright and Patent Agreement.” Neither Stanford nor Holodniy ever envisioned that that agreement would be at the center of a patent infringement suit filed 17 years later by Stanford against Roche Molecular Systems, Inc.