As anyone who’s negotiated with them knows, Harvard plays hardball when it comes to patent rights. But so do the university’s students, apparently. C&E News has a report on Mark Charest, a former graduate student in the Myers lab, who is suing the university over patent royalties.
Myers, Charest, and others reported a new synthetic route into the tetracycline antibiotics, and this led to a new company (Tetraphase), which is developing these in the clinic. The dispute is over how the royalties are divided up: Charest, in his legal complaint, claims that the university forced him in 2006 to take a lower share than he considered his due, and he further claims that the university reduced his share even further in 2009.
Note that all of these disputes are over the scraps: Harvard is taking 65% of the royalties right off the top, and no one’s going to be reducing that. And I’m not sure how far Charest is going to get with this lawsuit: the article says that an independent panel was called on at one point to review his contributions, so whether he liked the terms he was given or not, they’ve been scrutinized and he is presumably on record as having agreed to them.
It looks like he’s going to claim that this agreement was made under duress and/or under false pretences, though. ChemBark has more details, including statements by Charest in his complaint (link via Paul at ChemBark) that he felt threatened both by Prof. Myers and by Harvard’s technology transfer office, and is also alleging fraud (Halvorsen, below, is with Harvard’s Office of Technology Development):
74. Dr. Halvorsen threatened that he would award all the inventors an equal 20% share, but that he would allocate 50% of the Inventor Royalties to a wholly separate, undisclosed patent application on which Dr. Charest was not an inventor (the “undisclosed patent application”).
75. Dr. Charest understood Dr. Halvorsen to be threatening him; he wrote to Dr. Halvorsen that “[i]n your previous email you issued the written warning that my portion of the inventor allocation would be reduced if I proceed forward.”
76. Dr. Halvorsen used this separate, undisclosed patent application to force Dr. Charest to take OTD’s offer.
77. The undisclosed patent application, however, was, on information and belief, filed after financial terms were agreed to between Harvard and Tetraphase and added to the license between Harvard and Tetraphase just prior to finalization of their license agreement.
78. Dr. Charest only later learned that this separate, undisclosed patent application was only a ruse to force Dr. Charest to sign OTD’s offer.
No such patent application ever published, the document says. Much of the complaint also focuses on Harvard’s decision to give 50% of the inventor royalties to Myers, dividing up the rest between the students and/or postdocs on the patent, and claims that this is a violation of the university’s stated policies. So there’s no way that this cannot get ugly – it’s gotten ugly already. My guess is that Harvard will do whatever it can to get this thrown out (naturally), but if they’re unsuccessful in that, that there will be some sort of out-of-court settlement. I really don’t see them signing up to have all this dragged though the courts (and the public record) – even if the university did nothing wrong (and I’m agnostic about that), there’s still no upside for them.
So for anyone out there whose grad school experience was a bit on the rough side, take heart: at least it didn’t end up in court. Updates on this case as it slowly drags itself through the legal system.