Roche Triggers Trade Secret Spat With Stanford University Highlighting Overlapping Contract Risks

Roche Molecular Systems is suing Stanford University spinout Foresight Diagnostics over multiple patents relating to cancer detection technology that it alleges include Roche’s highly sensitive trade secrets. Filed in the US District Court for the Northern District of California, the lawsuit highlights collaboration dangers in both the biotechnology and university IP space as well as risks around overlapping contractual obligations. 

According to Roche’s 1 July complaint, Stanford professor Dr. David Kurtz, Foresight’s scientific advisor and also Roche contractor from 2017 to 2020, and his Stanford colleagues Dr. Ash Alizadeh and Maximilian Diehn – both Foresight’s co-founders and former Roche consultants – breached their contracts with Roche by founding Foresight “secretly”. 

“The newly filed Roche case highlights one of the major risks inherent in the collaboration between the commercial world and educational institutions, which is overlapping contractual obligations,” says William Stroever, who chairs the Intellectual Property Department at Cole Schotz and has extensive experience in biomedical products.

As he explains, it is not uncommon for professors to have employment agreements with their schools that automatically assign certain intellectual property to the school. But importantly, Roche alleges that it had written agreements with the professors to, among other things, assign certain inventions to Roche – something that is likely to be at the centre of the dispute as it progresses. 

As Stroever tells IAM, this case underscores the need for all parties in similar circumstances to take the time and effort to comprehensively “understand their rights and responsibilities under any assignment agreements they have executed, and to ensure that they are aware when they are in a situation where these agreements potentially overlap”.

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