(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 immu-
`nodeficiency 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 as-
`sign and do[es] hereby assign” to Cetus his “right, title and interest
`in . . . the ideas, inventions, and improvements” made “as a conse-
`quence 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 de-
`veloped 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 contrac-
`tors. 35 U. S. C. §§201(e), (c), 202(a). The Act defines “subject inven-
`tion” 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 re-
`tain title to any subject invention,” §202(a). Because some of Stan-
`ford’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 in-
`fringed Stanford’s patents. Roche responded that Holodniy’s agree-
`ment 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 Univer-
`sity had superior rights under the Bayh-Dole Act. The District Court
`agreed with Stanford and held that under the Bayh-Dole Act, Holod-
`niy 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 extin-
`guish 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 ap-
`plying inventor, or—because an inventor’s interest in his invention is
`assignable in law by an instrument in writing—an inventor’s as-
`signee. 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 in-
`vention 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 un-
`ambiguously that inventions created pursuant to certain specified
`federal contracts become the Government’s property. Such unambi-
`guous language is notably absent from the Bayh-Dole Act. Instead,
`the Act provides that contractors may “elect to retain title to any sub-
`ject invention,” §202(a), defining a “subject invention” as “any inven-
`tion 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 in-
`ventions that a contractor’s employees make with the aid of federal
`funds. That reading assumes that Congress subtly set aside two cen-
`turies of patent law in a statutory definition. This Court has rejected
`the idea that mere employment is sufficient to vest title to an em-
`ployee’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 con-
`ceived or reduced to practice under a funding agreement—inventions
`“of the contractor,” that is, those owned by or belonging to the con-
`tractor—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 “ac-
`quire” 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 inven-
`tions . . . that is inconsistent with” the Act—does not displace the ba-
`sic 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 Gov-
`ernment 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 sub-
`ject 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 em-
`ployee’s inventions to vest in the University even if the invention was
`conceived before the inventor became an employee, so long as the in-
`vention’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 reduc-
`tion to practice. It would be noteworthy enough for Congress to sup-
`plant one of the fundamental precepts of patent law and deprive in-
`ventors 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 typi-
`cally 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 Stan-
`ford 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. SO-
`TOMAYOR, 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, Wash-
`ington, 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 Busi-
`ness Patent Procedures Act of 1980—commonly referred to
`as the Bayh-Dole Act—displaces that norm and automati-
`cally 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 blood-
`borne 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
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`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” inven-
`tions 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 sam-
`ples, 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 Agree-
`ment (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 improve-
`ments” 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 de-
`vised 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 tech-
`nique. Over the next few years, Stanford obtained written
`assignments of rights from the Stanford employees in-
`volved in refinement of the technique, including Holodniy,
`and filed several patent applications related to the proce-
`dure. Stanford secured three patents to the HIV meas-
`urement 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-
`
`

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`Cite as: 563 U. S. ____ (2011)
`
`3
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`Opinion of the Court
`tained through agreements like the VCA signed by Holod-
`niy. After conducting clinical trials on the HIV quantifica-
`tion method developed at Cetus, Roche commercialized the
`procedure. Today, Roche’s HIV test “kits are used in
`hospitals and AIDS clinics worldwide.” Brief for Respon-
`dents 10–11.
`
`B
`In 1980, Congress passed the Bayh-Dole Act to “promote
`the utilization of inventions arising from federally sup-
`ported research,” “promote collaboration between commer-
`cial 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 actu-
`ally 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 Gov-
`ernment 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
`
`

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`4
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`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 con-
`tractor fails to take “effective steps to achieve practical
`application” of the invention. §203. The Act further pro-
`vides 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 meas-
`urement technique was funded by the National Institutes
`of Health (NIH), thereby subjecting the invention to the
`Bayh-Dole Act. Accordingly, Stanford disclosed the in-
`vention, conferred on the Government a nonexclusive,
`nontransferable, paid-up license to use the patented proce-
`dure, 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 Opera-
`tions, 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 Univer-
`sity’s HIV research was federally funded, giving the school
`
`

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`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 as-
`signed any rights that Holodniy had in the patented in-
`vention 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 indi-
`vidual 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 agree-
`ment with Stanford in the Copyright and Patent Agree-
`ment 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 quantifi-
`cation technique through the VCA.2 Next, the court ex-
`plained 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 auto-
`matically 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, includ-
`ing 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 co-
`ownership to rebut Stanford’s standing to bring an infringement action.
`2Because the Federal Circuit’s interpretation of the relevant assign-
`ment 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.
`
`

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`6
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`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, “de-
`priv[ing] Stanford of standing.” Id., at 836–837. The
`Court of Appeals then remanded the case with instruc-
`tions 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 pat-
`ent 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).
`
`

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`Cite as: 563 U. S. ____ (2011)
`
`7
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`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 re-
`quires”); Solomons v. United States, 137 U. S. 342, 346
`(1890) (“whatever invention [an inventor] may thus con-
`ceive 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 presump-
`tive 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
`
`

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`8
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`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 con-
`tend 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 De-
`partment 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 con-
`tractors 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
`
`

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`Cite as: 563 U. S. ____ (2011)
`
`9
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`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 con-
`tractor” 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 agree-
`ment. 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 contrac-
`tor,” that is, those owned by or belonging to the con-
`tractor—makes the phrase meaningful in the statutory
`definition. And “invention owned by the contractor” or
`“invention belonging to the contractor” are natural read-
`ings of the phrase “invention of the contractor.” As we
`have explained, “[t]he use of the word ‘of’ denotes owner-
`ship.” Poe v. Seaborn, 282 U. S. 101, 109 (1930); see Flores-
`Figueroa 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 “identifica-
`tion [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 Dic-
`tionary 1565 (2002) (“of” can be “used as a function word
`indicating a possessive relationship”); New Oxford Ameri-
`can Dictionary 1180 (2d ed. 2005) (defining “of” as “indi-
`cating 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 con-
`tractor” 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 employee-
`to-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 Peti-
`tioner 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 Colle-
`giate 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 feder-
`ally funded inventions on contractors or authorize contrac-
`tors 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 responsibili-
`ties 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 ante-
`cedent title to his invention.