Monday, November 13, 2006

Spicer sues Yale University over patent royalties

The Yale Daily News reported on November 13, 2006: Former Yale researcher Eleanor Spicer has filed a lawsuit against the University, claiming that she was cheated out of [patent] royalties from a technique she helped develop while completing her post-doctoral work at Yale School of Medicine.

Part of the text caught the eye of IPBiz: Like Konigsberg, Jon Soderstrom, managing director of the Yale Office for Cooperative Research, said he could not comment on Spicer's individual case. In general, he said, such between researchers and the University over patent rights is extremely rare. He said this is the first he can recall at Yale in the past 10 years.

Readers of IPBiz will recall the lawsuit between Nobel Laureate (chemistry 2002) John Fenn and Yale University, concerning who had rights in US 5,130,538 on electrospray ionization mass spectrometry, which was reported in IPBiz in February 2005.

The November 2006 Yale Daily article gave some background on patent policy at Yale:

While Yale Director of Public Affairs Helaine Klasky said she is unfamiliar with Spicer's particular lawsuit, she said there is a formal procedure for predetermining the amount of money that a researcher will receive off a commercialized discovery made at Yale.

"[Working out patents with the faculty] is a very long, well-established system," Klasky said. "It's surprising to hear about suits like this, because [royalties are] based on a complicated formula that's all worked out in advance."

According to Yale University's patent policy, royalties earned from products or techniques developed by University researchers and protected by University-filed patents "shall be used first to offset out-of-pocket expenses incurred by the University in applying for, obtaining and defending a patent."

The policy goes on to say that of the first $100,000 in net royalties, 50 percent goes to the inventors and 50 percent goes to the University to support research. As the royalties increase by increments of $100,000 the proportion of proceeds allocated to individual researchers diminishes to 40 percent and then 30 percent.

This policy exists in order to make it easier for the University to draw the line between academics and commercialism, said School of Medicine professor Vincent Pieribone. Before scientists even consider undertaking research at Yale, they know how much money they can expect to make from any potential discoveries.

In February 2005, the Yale Daily had noted:

Fenn said he believes Yale's division of royalties is unfair. Under current policy, the first $100,000 of net royalties is split 50-50 between the inventor and University, with 40 percent of the second $100,000 and 30 percent of anything above $200,000 going to the inventor.

The November 2006 Yale Daily also noted:

Spicer's lawsuit claims that Yale University and New York University's Mount Sinai School of Medicine have been earning royalties off the sublicensing of a technique to clone human tissue factor protein. According to Spicer, she helped discover how to clone the proteins while serving as junior researcher for Yale professor William Konigsberg, who led the Yale-Mount Sinai joint research project. The cloning technique is currently being sublicensed to pharmaceutical firms that use it as a means of synthesizing an active ingredient in blood screening tests.


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