Privity Without Duty: When Patent Inventors Are Bound but Not Represented

"When a university scientist invents something valuable, a familiar sequence follows. The inventor assigns rights to the university as a condition of employment. The university licenses the patent to a corporate partner while the inventor retains a royalty interest. If infringement litigation erupts, the inventor watches from the sidelines while lawyers representing the university and its licensee make decisions that will determine the value of that royalty stream."

"Zirvi, a Cornell-trained scientist who co-invented "ZipCode" DNA sequencing technology, claims that the law firms controlling patent infringement litigation on behalf of Cornell University and its exclusive licensee Thermo Fisher Scientific told him that his interests were "aligned" with theirs and that they "represented his interests." He spent hundreds of hours preparing confidential technical analysis at the lawyers' request. But when the case settled, he had no seat at the negotiating table."

When an academic assigns invention rights to a university, the university typically licenses patents to corporate partners while inventors retain royalty interests. Litigation decisions made by university and licensee counsel can determine royalty value while inventors remain excluded from negotiation. Dr. Monib Zirvi, a Cornell-trained co-inventor of "ZipCode" DNA sequencing technology, alleges that law firms representing Cornell and Thermo Fisher told him his interests were aligned and that they represented him. He provided confidential technical analysis at counsel's request but received no role in settlement negotiations and later sued for malpractice, encountering procedural obstacles.

Read at Patently-O