University Research and IP – A Case in Point

December 22nd, 2010

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.)

Posted in Case Law, Intellectual Property, Licensing, Monetization, Patents | 1 Comment »

The trouble with presumed validity – An Example

December 21st, 2010

One of my favorite bogus patents, which highlight the downside of presuming validity in the patenting process, is the “Olson Swinging Patent.”  This patent illustrates the problem of not finding readily referenced prior art in obvious or trivial matters and, therefore, how examiners may have no recourse but issue absurd patents under 35 U.S.C. 282.

Based on the application filed November 17, 2000, examiner Kien T. Nguyen issued US patent 6,368,227 under the title “Method of Swinging on a Swing.”   (The issue date is listed as April 9, 2002, but an exemption should have been made and a date of 4/1/02 used)  Crafted by the inventor’s father, a patent attorney, the invention disclosed is a presumed innovative method of swinging from side-to-side, as opposed to the back-and-forth prior art.

swing-method-150x140

 

Fortunately for the myriad children “side-swingers” who would be infringing, the last part of the description states “Licenses are available from the inventor upon request.”  Unable to base a rejection on the grounds of plain common sense, the examiner cites two prior applications as references.  Perhaps the examiner considered citing 8 mm footage of playgrounds from the fifties and sixties, but copyright and rights of publicity concerns kept those references undisclosed.  Should this have been issued on any grounds, other than it does not infringe the laws of gravity?

Fortunately, after the obvious joke was revealed, the USPTO cancelled the claims as stated in the Reexamination Certificate issued under 35 USC 307.

At the time of issue, the New York Times commented on the patent, and it remains a prime example.

Posted in Infringement, Intellectual Property, Patents | Comments Off on The trouble with presumed validity – An Example

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