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University Research and IP – A Case in Point

Recently (12/10/10), Judge Garaufis of the U.S. District Court for the Eastern District of New York denied a motion to dismiss the case brought by St. John’s University against a former professor, Sanford Bolton, his PhD student, Spiridon Spireas, and the company they formed to commercialize four patents (allegedly) improperly concealed from the University.

The opinion notes that, under New York law, St. John’s had sufficiently alleged that Bolton and Spireas breached their contractual obligations to assign patentable inventions to it.

A notable fact in this case is that Bolton retired in 1994 and Spireas completed his PhD in 1993.  Their first patent application was filed two years after Bolton’s retirement and their research at the University allegedly resulted in inventions which are the subjects of at least three additional patents.  Liability in this case is being argued on the basis of contracts used by the University to protect intellectual property rights.

As  James DeGiulio observes on the Patent Docs Blog; “…One piece of evidence that Judge Garaufis pointed to was Spireas’s dissertation, which contains sections literally copied into one of the patents.  The judge also found that Bolton and Spireas were fiduciaries of St. John’s, and owed it a duty to fully disclose material facts relating to their research…”

For instance, St. John’s College of Pharmacy and Allied Health Professions had a Patent Policy that governed the ownership of inventions resulting from research
conducted by St. John’s faculty and students. Under this policy, Bolton and Spireas were allegedly obligated to assign to St. John’s “…all patentable inventions, discoveries, processes, uses, products, or combinations resulting, in whole or in part, from any of (a) the use of the laboratories or other facilities of [St. John’s], (b) services  rendered by faculty to [St. John’s], (c) research conducted by graduate students or doctoral candidates under the direction of [St. John’s] faculty, or (d) any related or predicate research . . .”
The case has wider implications as these are common provisions, not only among universities, but in many research institutions and commercial entities.

Bolstering the University’s interest in enforcing the agreements with the researchers is the commercial success of the venture.  Hygrosol has received at least $100 million in revenue from the licensing agreements, which has been transferred to Bolton and Spireas, according to court documents.

We shall continue to follow this case to draw conclusions about the current case law on the enforcement of invention assignments.

(Thanks to Patent Docs, you can download the memorandum and order here.)

This entry was posted on Wednesday, December 22nd, 2010 at 7:30 am and is filed under Case Law, Intellectual Property, Licensing, Monetization, Patents. You can follow any responses to this entry through the RSS 2.0 feed. Both comments and pings are currently closed.

One Response to “University Research and IP – A Case in Point”

  1. Institutions Have A Long Memory « Rational Law LLC | Steve Glista | Attorney says:
    December 26, 2010 at 3:03 am

    […] to align interests between the institutional scale and the human scale.  Which, in a nutshell, is why you get cases like this one: Bolton retired in 1994 and Spireas completed his PhD in 1993.  Their first patent application was […]