Jonathan Tabasky ()
The knowledge that college students get from their education might be priceless. But a price can be put on the intellectual property generated by universities: about $1.8 billion was earned in the 2011 fiscal year by institutions of higher education that commercialized their academic research, according to the Chronicle of Higher Education.
However, the money generated from universities’ intellectual property can be put into college coffers only if the appropriate legal protections are in place. The role of lawyers in protecting the IP output of universities is being highlighted by a lawsuit Brown University has filed against a Connecticut law firm. Brown’s outside patent counsel allegedly let expire a patent for a high-resolution scanning, magnetic microscope.
The result, according the university, was that it had to walk back a licensing arrangement for the microscope patent, including forgiving license payments it had already been paid, waiving future license payments and making a damages payment to its licensee.
In April, Brown filed a lawsuit in the U.S. District Court in Rhode Island against Harrington & Smith, a Shelton-based IP boutique.
Harrington & Smith was hired by Brown in 2003 to prosecute patents on behalf of the university, including the patent protecting the microscope. A payment was supposed to be made between Aug. 16, 2008, and Feb. 16, 2009, to the U.S. Patent and Trademark Office to maintain the patent.
The maintenance payment was not made during the time that Harrington & Smith was the attorney of record for the patent, according to Brown University.
But in the latest twist in the case, Harrington & Smith is pointing the blame at the university’s then in-house patent counsel, Luann Cserr, and the firm filed a third-party complaint against her on June 30. Brown said that it employed Cserr, who did not respond to a request for comment, as its in-house patent counsel from 2007 until terminating her employment March 31, 2009.
The Shelton firm acknowledges that it agreed to resume responsibility for keeping up the maintenance fee on the microscope patent, but not until August 2009. At that point, the firm said, it did not know that the patent had already expired under Cserr’s watch.
The law firm’s counsel, Jonathan Tabasky of Manion Gaynor & Manning in Boston, said in an emailed statement that “the firm denies that it had any responsibility for ensuring payment of the patent’s maintenance which was due in 2009, and will establish through the litigation that responsibility for the 2009 payment was with the university and its former in-house counsel.”
James Green, deputy counsel at Brown, did not respond to a request for comment.
According to court documents, correspondence about the patent routinely went to Cserr’s home address during her time at the university and afterward too.
Harrington & Smith’s third-party claim says that “when Brown eventually realized that Luann Cserr was the one and only individual with access to the information associated with the [patent],” Brown requested a list of patent cases from Cserr. But she refused to provide it.
During “this stonewall from its former attorney,” the university did not learn that the patent had expired, according to the law firm. Cserr also never notified the university that the patent had expired.
“Cserr owed Brown a duty to manage the post-issuance matters of its U.S.-issued patents, including payment of the first maintenance fee for the … patent, which came due while Cserr served as Brown’s in-house patent attorney,” Harrington & Smith said in court documents.
After Cserr’s employment was terminated, Brown said it sought to reassign the timely payment of maintenance fees to the attorneys who had prosecuted those patents. According to Brown, the duty to maintain the patent shifted back from Cserr to Harrington & Smith after the law firm accepted the duty of notifying Brown about the maintenance fees coming due for all of the university’s patents.
Harrington & Smith should have reminded Brown of the ultimate Aug. 16, 2009, deadline (the end of a six-month grace period following the Feb. 16 due date) for the maintenance fee on the patent to be paid, the university argued. And Harrington & Smith should have reminded the university that the failure to make a timely payment would lead to the patent’s expiration, the university added.
“It is the custom and practice of a reasonably prudent patent attorney to maintain a ‘docket’ listing all matters they are working on, or have worked on, to keep track of deadlines such as maintenance payments,” the university said in its complaint. “This custom and practice includes reminding patent owners and inventors of maintenance fee payment deadlines throughout the life of the patent and confirming the client’s continued intention to maintain the patent in force.”
However, the Shelton firm alleges that it had to wait 22 days for a Brown employee to confirm the change of addresses should be filed for all of Brown’s patents. According to Harrington & Smith, the employee confirmed 10 days after the patent for the microscope had expired.
Harrington & Smith counters that it was Cserr, the former in-house counsel, who failed to maintain the patent, failed to notify anyone at Brown that the patent had expired, and failed to change the address associated with the patent from her home address after she was terminated by Brown.
Brown’s new patent counsel, Lawson & Weitzen in Boston, recently was able to reinstate the patent for the magnetic microscope.•