A U.S. District Court ordered Nobel Prize winner and former Yale University professor John Fenn, 87, to pay Yale $545,000 in royalties and penalties, and pay their legal bills of almost $500,000. While at Yale in the late 1980s, Fenn developed a method for mass spectrometric analysis of chemical compounds in solution concerned with determining the mass or molecular weight of large fragile solute species with greater speed, convenience and accuracy as well as new compositions of matter comprising populations of ions having a multiplicity of charges.
The court called Fenn’s actions “fraud” and “civil theft” when he licensed the rights to U.S. Patent No. 5,130,538 to a company he partly owned, which has generated more than $5 million in royalties and could make several times that by the time the patent expires. While Fenn claimed he believed that he had a right to the patent, the court felt that he had no good-faith basis to believe so and acted to conceal the facts from Yale.
More on the Fenn case here.
I have not seen too many cases of out-right inventor theft from Universities but it can happen. In one of the few cases where the inventor went to jail, Petr Taborsky, a former student at the University of South Florida, went to jail as a result of a dispute over technology ownership. In that case, Taborsky worked as undergraduate lab assistant on a sponsored research project and discovered a potential way to make kitty litter useful in cleaning human waste water. The sponsor, utility company Florida Progress Corp., had an exclusive option to get all inventions coming from the project when Taborsky stole the lab notebooks and attempted to patent the discoveries.
He was convicted of grand theft and theft of trade secrets and sentenced to probation. Of note, he was only sent to jail to spend time on a chain-gang after violated probation when he applied for and received three patents on the invention, despite the judge’s order not to do so. Most universities, though, would probably pursue civil actions and not criminal charges.
