MU sues professor over intellectual property dispute
February 12, 2009
Anchor Intro: With universities across the country trying to capitalize on innovation during these troubled economic times, the University of Missouri System is suing one of its leading researchers over intellectual property violations.
The suit, filed in federal court last month, alleges that chemical engineering professor Galen Suppes failed to assign ownership of several of his inventions to the University. KBIA’s Elle Moxley explains the long-running feud.
(6:30)
In 2002, with investment in alternative energy at its peak, the Environmental Protection Agency warned that farmers would soon flood the market with a billion pounds of excess glycerol per year – glycerol is the byproduct of converting soybeans into biodiesel, and it’s used to make clear soaps.
But without another commercial use for glycerol, ethanol production seemed doomed to create huge amounts of waste that would damage its sustainable reputation.
That’s why Dr. Galen Suppes won the President’s Green Chemistry Challenge in 2006 when his lab converted glycerol into an eco-friendly substitute for anti-freeze. It took more than four years to develop the technology, and Suppes says he tried to involve the University in each step of the provisional patent process.
But he says it wasn’t until he informed the University that royalties were being paid that anyone involved with technology transfer took notice.
“And it was like a hornet’s nest of activity at that point. Their diligence to perform their job in the way of handling intellectual technology was no motivation at all. But as soon as they thought money was present, all they could do was go after the money. And they still did not do diligence on handling the technology.”
Technology transfer is the sometimes perilous process that professors and other university employees go through to assign rights to their inventions to the curators. At the University of Missouri, employees sign a contract assigning anything made within the general scope of their duties to the University. But Suppes says the University has instead made broad claims on the technology he patented with former graduate teaching assistant William Sutterlin.
Instead of treating the invention as a joint-venture with the company Drs. Suppes and Sutterlin co-founded, Suppes says the University has tried to claim sole-ownership of the glycerol conversion technology. It’s a claim based on Dr. Sutterlin’s part-time employment within the Department of Chemistry, even though Suppes says his business partner was making thousands more – plus benefits – performing consulting work at the time. So last year, Suppes filed a grievance with the University of Missouri so a panel of faculty members could review the technology transfer protocols.
But one day before the committee was set to convene, the university served Suppes with a lawsuit and terminated the grievance process.
“The grievance results would be very embarrassing to the University, and so one of the prospects of a lawsuit is that the president can spend a large amount of Missouri taxpayer money probably with the primary objective to try to bully me into submission.”
But as for what’s at stake, Suppes says he isn’t sure. He says he assigned his rights to all of his inventions to the University in November 2008 despite having doubts about what the University could actually claim.
In a press release, the University says the lawsuit challenges quote-“multiple impermissible alterations to University Invention Disclosure Forms” made by Suppes. Several attempts to get comment from the University were unsuccessful. More than a dozen communications over a two-week period were bounced between departments or went unanswered.
Yet technology transfer lies at the heart of the University’s plan to generate revenue in these troubled economic times. In his State of the University address, UM System President Gary Forsee said the University was prepared to provide resources and encouragement to employees willing to undertake the technology transfer process rather than sit on good ideas and not develop them.
“This is a responsibility. This is an opportunity that we have that’s unique because of our land grant mission in this state to take that research and find those ideas that can in fact be commercialized, that we can have the technology transfer in place.”
Last year, the University spent 1.2 million dollars marketing and licensing employee-created technology. The return on that investment was 6.4 million dollars. That’s a lot of money, but one of Forsee’s goals is to increase that amount nearly ten fold. He wants to see a 50 million dollar annual return on technology transfer by 2014.
But according to a national intellectual property expert, that goal is pretty unrealistic.
“If you look across the country at the data, the odds are stacked against that kind of success.”
That’s Indiana State University Professor Joshua Powers. He studies academic entrepreneurship and intellectual property. He says that while investing in technology transfer might sound like a lucrative solution for universities trying to generate revenue, there’s any number of reasons why commercialization may ultimately fail. Powers says that of the approximately 160 universities claiming a return on intellectual property investments, the top ten research universities share about 60 percent of the profits.
“I think there’s some naivete across the country amongst senior administrator types thinking ‘If the University of Florida can do it,’ or ‘If MIT can do it,’ then of course we can do it. And they may be able to do it. But if you look at the data, it’s going to be a tall, talll challenge.”
Suppes says potential for his and Dr. Sutterlin’s green technology to turn a profit decreased drastically as soon as the University got involved.
Suppes says he couldn’t even find out anything about the licensing agreement with the company trying to commercialize his technology until he filed a Sunshine Law request.
“What chance does a technology have to become commercial now when ther’s this disjoint, disconnected from the expertise that actually developed the technology?”
Just as frustrating, Suppes says, is the University’s failure to release the rights of his other inventions, those that the University has not decided to commercialize.
That’s also a part of the University’s rules and regulations.
Powers says most institutes of higher learning recognize they can’t afford to pursue every new technology developed on campus, so they have a review process in place to release those rights back to inventors.
But Suppes says the University of Missouri has been sitting on the rights to his inventions since he came to the University in 2001 rather than risk turning over a profit-generating technology.
Because the lawsuit prevented his grievance from ever reaching the faculty review board, Suppes says he plans to serve the University with a countersuit. He is still employed at the University and says he has no plans to leave.
Elle Moxley, KBIA News.