Biochemist sues Yale over royalties

A researcher involved in cloning human tissue factor at Yale University has sued her former employer arguing she has been cut out of royalties stemming from sales of a blood test based on her work.

Eleanor Spicer, who is now a biochemistry professor at the Medical University of South Carolina, filed suit in U.S. District Court in Connecticut contending she is a co-inventor of the process that is now used in prothrombin time (PT) tests. The tests are used widely in monitoring clotting in patients taking blood-thinning medication.

William Konigsberg, a lead scientist on the project at Yale, is also named as a defendant in the lawsuit, which was filed in October. The suit charges Konigsberg has received royalties from the product, but has not shared any of those payments with Spicer, who worked on the project using recombinant DNA to isolate the protein that sets off blood clotting. Konigsberg declined comment on the case.

In a statement, Dorothy Robinson, Yale's chief counsel said: "We do not believe Dr. Spicer's claim for royalties has any merit and we will be defending the suit."

Spicer's suit claims that when she was doing post-doctoral work at Yale in the 1980s, she worked with Konigsberg in reviewing amino acid sequences, designing probes and selecting a cDNA library for sequencing. The suit also says Spicer, along with others, constructed restriction maps based on actual nucleotide sequencing to yield the nucleotide sequence of the clone. It was Spicer who printed a computer listing of the nucleotide sequence of human tissue factor clone isolated in October 1986 encoding the full human tissue factor protein, the suit alleges.

Citing Yale patent policy, the suit states that for discoveries that yield royalties of $100,000, inventors and the university share the receipts 50-50. When royalties exceed $200,000 the division between the university and inventors is determined by a "good-faith negotiation." In the absence of such an agreement, the inventors receive 32% of net royalties, according to the policy described in the suit.

Spicer's suit goes on to point out a section of the Yale patent policy that reads: "As used in this document, the term 'Inventor' may represent two or more individuals. These individuals will be expected to agree among themselves on the fractional distribution of the Inventor share of the royalties."

Spicer alleges Konigsberg has been paid a portion of the royalties, but concealed that from her. She says she has never been offered a share of PT test royalties.

The sequencing project was done in collaboration with New York University's Mount Sinai School of Medicine. In an interview with The Hartford Courant, Yale Nemerson, Mount Sinai's lead investigator in the project, said Yale and Mount Sinai agreed to split royalties from the invention. Konigsberg and Nemerson received payments too under agreements with their institutions.

For Nemerson, the payments amount to $60,000 a year for the next 17 years. Nemerson said he gives 20% of his royalties to his researcher on the project, Ronald Bach, who held a position at Mount Sinai similar to the one held by Spicer at Yale. He said Konigsberg made the same offer to Spicer but she rejected it.

Spicer does not list specific monetary damages in her action, but the suit states she is seeking more than $75,000, which is the financial threshold for federal court cases. Frank Murphy, Spicer's attorney said he and Spicer would have no comment on the lawsuit. Nemerson was traveling and unavailable for comment.

Spicer's suit acknowledges she did assign her rights to royalties from the project to Yale and supported the university in its patent application.

Robinson, in her statement, said Spicer is not listed as an inventor on the patent. "The patent and trademark office ruled that she was not an inventor and we believe that was definitive."

Susan Warner
mail@the-scientist.com

Links within this article:

Eleanor Spicer
http://www.musc.edu/BCMB/faculty/spicer/index.htm

William Konigsberg
http://www.mbb.yale.edu/fl/fl_w_konigsberg.htm

T. Agres, "I'll See You in Court," The Scientist, June 20, 2005
http://www.the-scientist.com/article/display/15552/

T. Agres, "Life Science Patents Enrich Academe," The Scientist, Oct. 14, 2002
http://www.the-scientist.com/article/display/13327

Yale Nemerson
http://directory.mssm.edu/faculty/facultyInfo.php?id=5290&deptid=18

K. Young Kreeger, "Know Your Legal Rights," The Scientist, March 20, 200
http://www.the-scientist.com/article/display/11776