Most universities are not willing to allow outside companies to profit from inventions and patents produced by its faculty — especially not for free.
USF representatives are suing drug corporation CoMentis Inc. located in San Francisco for what the university’s board of trustees claims is a breach of a settlement agreement. The original agreement, reached in 2012, was over patent infringement involving four patents used in Alzheimer’s research licensed by USF.
While CoMentis paid an initial $150,000 as part of the settlement, the corporation informed USF in writing it will not meet another agreed upon payment of $450,000, according to a legal complaint by USF submitted on June 30 in the U.S. District Court for the Middle District of Florida in Tampa
For failing to make the second payment, USF is suing CoMentis for the $450,000, interest on the payment and reasonable attorney’s fees and expenses, as stated in the complaint.
This lawsuit originated from a case filed in 2010 by the Alzheimer’s Institute of America (AIA) against CoMentis, three other research companies, the Oklahoma Medical Research Foundation and the University of Pennsylvania. AIA accused those involved of experimenting with four research patents it owned, claiming former USF professor Michael Mullan gave the institute legal rights to the patents.
Mullan was a co-inventor of the four inventions covered in the patents, including a method of predicting a predisposition to Alzheimer’s disease and lab mice with a mutant gene that causes the illness. According to the patent listings on the U.S. Patent and Trademark Office website, the four patents are assigned to AIA.
USF then intervened in the lawsuit and explained that it, not AIA, held the rights to the patent, as Mullan helped develop the inventions while he was an employee at USF. USF also stated that Mullan was not the sole inventor of the inventions in question and therefore could not legally assign the patents.
The court involved in this case struck down AIA’s lawsuit and ruled USF had at least partial ownership of the patents, allowing USF to enter settlement agreements with each of the prior defendants and collect more than $1 million in resulting payments.
CoMentis, however, is disputing the university’s ownership of the patents according to USF’s complaint and claimed that a post-trial ruling in the 2010 case denied USF’s motion to obtain full ownership rights — therefore making it impossible to determine USF’s ownership status.
In its complaint, USF stated this claim “leads to absurd results” and stated CoMentis did not hold this view while negotiating the original 2012 settlement agreement. Alternatively, it stated, if CoMentis did hold this view while agreeing to its settlement with the university, “then USF reserves the right to amend this complaint to add appropriate allegations of fraud.”
Due to the university’s policy not to speak about ongoing litigation, a USF spokesperson declined comment on the lawsuit or related topics. This includes the potential concern of outside companies profiting from university-based research and technology.