Summary
This post analyses the increasing trend of research institutes initiating patent suits to safeguard their intellectual property. It discusses the prominent lawsuit filed by the Leonard and Madlyn Abramson Family Cancer Research Institute against Dr. Craig B. Thompson, raising significant legal and financial questions. The post references several precedents in the United States, where courts have ruled on disputes between researchers and their academic institutions. Central to such cases is the definition of intellectual property and the determination of whether knowledge, know-how, or specific inventions belong to the researcher or the institute. The outcome of these disputes often has substantial implications for the funding and future research prospects of the institutions involved.
Research centres have grown increasingly assertive in claiming intellectual property rights over work produced within their walls, and are willing to pursue litigation to enforce those rights. A prominent example is the lawsuit filed by the Leonard and Madlyn Abramson Family Cancer Research Institute at Pennsylvania against its former scientific director, Dr. Craig B. Thompson, who subsequently became President and CEO of Memorial Sloan-Kettering Cancer Center. Filed in the United States District Court in Manhattan in December 2011, the complaint describes Dr. Thompson as having absconded with the fruits of the institute’s investment in his research.
The Abramson Institute Lawsuit
At the heart of the dispute are the intellectual property rights over research that the Abramson Institute claims was conducted by Dr. Thompson within its facilities. The Institute alleged that Dr. Thompson did not disclose the relevant research to the University of Pennsylvania and that he subsequently utilised it in his company, Agios, which he founded after departing the Institute. Dr. Thompson’s counsel, however, contested that the complaint failed to identify any specific research that was in question.
The Institute further alleged that Dr. Thompson’s conduct deprived it of proceeds that could support future research, claiming damages in excess of $1 billion. The fact that Celgene invested $150 million in Agios — a company that at the time had no drug in clinical trials — attracted considerable attention. Although Agios maintained that it had not pursued the technology on which Dr. Thompson was working at the Institute, he had been a co-author on scientific papers concerning genes IDH1 and IDH2 during his tenure there, which became a focus of Agios’ research.
Precedents Involving Research Institutions
The case is not without precedent. In 2005, a court ordered John B. Fenn, a former Yale professor, to pay $545,000 plus legal fees of approximately $500,000 to the university. Fenn had been found to have licensed, without involving the university, a molecular analysis technique — the same technique for which he received the Nobel Prize — to a company he co-founded.
In 2006, Dr. J. Milton Harris, a former professor at the University of Alabama, Huntsville, and Nektar Therapeutics, a company with which he was associated, agreed to pay a settlement of $25 million to the university to resolve allegations that he had secretly patented a unique drug formulation technology.
A former student laboratory assistant at the University of South Florida, Petr Taborsky, was convicted of theft and imprisoned after patenting a wastewater treatment method that he claimed to have invented independently.
The Central Legal Question
The legal question at the core of the Abramson matter was whether what Dr. Thompson carried to Agios constituted intellectual property — depending on whether he took mere knowledge and know-how, or something more — and whether such conduct would amount to a violation of IP rights. Since the Institute’s complaint did not specify any particular patent, the question of precisely what Dr. Thompson brought to Agios remained to be answered. If it were established that Dr. Thompson contributed only general insights to Agios’ research, the court would need to determine how such a contribution falls to be assessed under established principles of IP law.
Disclaimer: This article is for general information and does not constitute legal advice. Readers should consult a qualified attorney before acting on any matter discussed here.