{"id":85,"date":"2010-12-22T07:30:36","date_gmt":"2010-12-22T14:30:36","guid":{"rendered":"http:\/\/ipmetrics.net\/blog\/?p=85"},"modified":"2010-12-22T07:30:36","modified_gmt":"2010-12-22T14:30:36","slug":"university-research-and-ip-a-case-in-point","status":"publish","type":"post","link":"https:\/\/www.ipmetrics.net\/blog\/litigation\/case-law\/university-research-and-ip-a-case-in-point\/","title":{"rendered":"University Research and IP – A Case in Point"},"content":{"rendered":"

Recently (12\/10\/10), Judge Garaufis of the U.S. District Court for the Eastern District of New York\u00a0denied 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\u00a0concealed\u00a0from the University.<\/p>\n

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.<\/p>\n

A notable fact in this case is that Bolton retired in 1994 and Spireas completed his PhD in 1993. \u00a0Their first patent application was filed two years after<\/span> Bolton’s retirement and\u00a0their research at the University allegedly resulted in inventions which are the subjects of at least three additional\u00a0patents. \u00a0Liability in this case is being argued on the basis of contracts used by the University to protect intellectual property rights.<\/p>\n

As \u00a0James DeGiulio observes on the Patent Docs Blog<\/a>;\u00a0“…One piece of evidence that Judge Garaufis pointed to was Spireas’s dissertation, which contains sections literally copied into one of the patents.\u00a0 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…”<\/p>\n

For instance, St. John\u2019s College of Pharmacy and Allied Health Professions had a Patent Policy\u00a0that governed the ownership of inventions resulting from research<\/div>\n
conducted by St. John\u2019s faculty and students. Under this policy,\u00a0Bolton and Spireas were allegedly obligated to assign to St.\u00a0John\u2019s “…all patentable inventions, discoveries, processes, uses, products, or combinations\u00a0resulting, in whole or in part, from any of (a) the use of the laboratories or other\u00a0facilities of [St. John\u2019s], (b) services \u00a0rendered by faculty to [St. John\u2019s], (c)\u00a0research conducted by graduate students or doctoral candidates under the\u00a0direction of [St. John\u2019s] faculty, or (d) any related or predicate research . . .”<\/div>\n
<\/div>\n
The case has wider implications as these are common provisions, not only among universities, but in many research institutions and commercial entities.<\/div>\n

Bolstering the University’s interest in enforcing the agreements with the researchers is the commercial success of the venture. \u00a0Hygrosol has received at least $100\u00a0million in revenue from the licensing agreements, which has been transferred to Bolton and\u00a0Spireas, according to court documents.<\/p>\n

We shall continue to follow this case to draw conclusions about the current case law on the enforcement of invention\u00a0assignments.<\/p>\n

(Thanks to Patent Docs<\/a>, you can download the memorandum and order\u00a0here<\/a><\/span>.)<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

A New York court denied a motion to dismiss the case brought by St. John’s University against a former professor, his PhD student, and the company they formed for commercializing four patents allegedly concealed from the University.<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[3,11,14,16,17],"tags":[],"jetpack_sharing_enabled":true,"jetpack_featured_media_url":"","jetpack_shortlink":"https:\/\/wp.me\/p2xROl-1n","_links":{"self":[{"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/posts\/85"}],"collection":[{"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/comments?post=85"}],"version-history":[{"count":0,"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/posts\/85\/revisions"}],"wp:attachment":[{"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/media?parent=85"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/categories?post=85"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.ipmetrics.net\/blog\/wp-json\/wp\/v2\/tags?post=85"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}