A Nobel laureate isn't entitled to royalties from an invention that earned him a share of his prize because the idea belongs to his university. Last week, a U.S. District Court judge ordered John Fenn, a former professor of chemistry at Yale University, to pay Yale more than $1 million in damages and attorney's fees, as well as patent rights. Attorneys say the case demonstrates how universities and researchers can find themselves at odds as schools increasingly try to profit on discoveries made within their labs.
The decision is the latest round in a decade-long legal fight between Fenn, 87, and the university where he spent most of his storied career. The saga centers around electrospray ionization--a mass spectroscopy technique pioneered by Fenn at Yale in 1998--that allows researchers to characterize large biological molecules. The invention won Fenn a share of the 2002 Nobel Prize in chemistry and has touched fields ranging from drug discovery to forensics. It has also led to millions of dollars in sales of mass spectrometers.
Under the university's patent policy, Fenn should have given Yale the right of first refusal to patent his innovation. Fenn did not, and in 2003 federal judge Christopher F. Droney found that Fenn "misrepresented the importance and commercial viability of the patent … while at the same time secretly preparing a patent application in his own name." In his 8 February ruling, Droney expanded that finding by saying Fenn had "no good faith basis" to believe he had a right to the patent, which Yale had sought in court. The judge concluded that Fenn had committed "fraud" and "larceny" and awarded damages and legal fees totaling $1,037,549 to Yale plus recent legal expenses and patent rights. Fenn says he "probably" would appeal the case but declined further comment.
Although lawyers say the case raises few basic legal questions, patent attorney Dennis Crouch of McDonnell Boehnen Hulbert & Berghoff in Chicago says it should send a powerful signal to academics. "Professors should ensure that they are up-front with their employer about the potential market for any invention," he says.