Mandy Taggert is a professor of biotechnology at The Ohio State University. Her research is related to the human genome project, which attempts to map all the DNA on a human cell to obtain a complete blueprint for the species. Several corporations, including Merck Pharmaceuticals, became extremely interested in the commercial potential of Mandy's research.
Merck approached Mandy with a contract proposal. They offered her $3 million dollars for the opportunity to acquire an exclusive patent on her research. Mandy investigated her employment contract with Ohio State, to see if there was any restriction on her right to enter into a contract with Merck. She discovered that the OSU faculty handbook, which was incorporated by reference in her employment contract, required her to grant OSU a one-half interest in any patents or licenses that she might obtain based on research performed while employed by OSU. The handbook went on to provide that she could license and sell her 50% share of any research efforts, but only to corporations that were incorporated in or had their principal places of business in Ohio. Merck is incorporated in Delaware, and its principal place of business is in New Jersey.
Mandy decided to consult a lawyer. She hired Sam Spade, who did some additional research. Sam learned that the federal Patent Act had recently been amended to provide that "no rights granted under this statute may be compromised by any employment agreement." The Patent Act also provides that "states shall be liable for violations of this chapter to the same extent as any private party." Finally, the Patent Act provides that: "Any person may commence a civil suit. . . ."
Mandy and Merck sued OSU in federal court, alleging that the handbook provisions violated the dormant commerce clause and the contracts clause. She also argued that the Patent Act preempted the provisions in her employment contract.
Assume that the Patent Act was passed pursuant to Congress' Article I powers, and that OSU is a state actor. Discuss and resolve all constitutional law issues.