Scientist sues over royalties

Former Yale researcher Eleanor Spicer has filed a lawsuit against the University, claiming that she was cheated out of royalties from a technique she helped develop while completing her post-doctoral work at Yale School of Medicine.

Spicer’s lawsuit claims that Yale University and New York University’s Mount Sinai School of Medicine have been earning royalties off the sublicensing of a technique to clone human tissue factor protein. According to Spicer, she helped discover how to clone the proteins while serving as junior researcher for Yale professor William Konigsberg, who led the Yale-Mount Sinai joint research project. The cloning technique is currently being sublicensed to pharmaceutical firms that use it as a means of synthesizing an active ingredient in blood screening tests.

Dorothy Robinson, Yale’s general counsel, said she does not believe Spicer’s claim has merit, so the University will fight the suit.

“The Patent and Trademark Office ruled that she was not an inventor, and we believe that was definitive,” Robinson wrote in an e-mail.

Spicer, currently a biochemistry professor at the Medical University of South Carolina, could not be reached for comment.

Konigsberg declined to comment, saying he had been instructed by Yale’s general counsel not to discuss the matter publicly during the investigation.

Yale School of Medicine Dean Robert Alpern said the revenue the University receives from the licensing of the technique is minimal.

“I don’t think there’s a whole lot of money in question,” he said. “From the amounts they’re talking about, it sounds like it was less than $100,000. We’ve had discoveries before at the med school where we were looking at over $100 million.”

Like Konigsberg, Jon Soderstrom, managing director of the Yale Office for Cooperative Research, said he could not comment on Spicer’s individual case. In general, he said, such between researchers and the University over patent rights is extremely rare. He said this is the first he can recall at Yale in the past 10 years.

While Yale Director of Public Affairs Helaine Klasky said she is unfamiliar with Spicer’s particular lawsuit, she said there is a formal procedure for predetermining the amount of money that a researcher will receive off a commercialized discovery made at Yale.

“[Working out patents with the faculty] is a very long, well-established system,” Klasky said. “It’s surprising to hear about suits like this, because [royalties are] based on a complicated formula that’s all worked out in advance.”

According to Yale University’s patent policy, royalties earned from products or techniques developed by University researchers and protected by University-filed patents “shall be used first to offset out-of-pocket expenses incurred by the University in applying for, obtaining and defending a patent.”

The policy goes on to say that of the first $100,000 in net royalties, 50 percent goes to the inventors and 50 percent goes to the University to support research. As the royalties increase by increments of $100,000 the proportion of proceeds allocated to individual researchers diminishes to 40 percent and then 30 percent.

This policy exists in order to make it easier for the University to draw the line between academics and commercialism, said School of Medicine professor Vincent Pieribone. Before scientists even consider undertaking research at Yale, they know how much money they can expect to make from any potential discoveries.

“Everyone has a hard time with that question because when you’re making discoveries that have commercial value, the proper amount that people should be making off these things is questionable,” Pieribone said.

Pieribone said Yale spends a considerable amount of money on patents for products developed by researchers so that they — and the University — have the opportunity to cash in on discoveries that turn out to be commercially viable. He estimated U.S. patent coverage can cost up to $25,000 on average, while international patent coverage — which he said most University discoveries should have — can cost up to $75,000.

“Occasionally [some] discoveries make it, and then the University needs to cover lost revenue spent on all these other inventions that never made it,” he said. “It seems a little unfair, but I think in the bigger picture it’s difficult to fault the University for trying to recover some of this money.”

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