University Sues Its Own Professor In Patent Dispute

PHILADELPHIA--In a move that surprises many observers, the University of Pennsylvania has sued one of its own professors and a pharmaceutical firm over the ownership of a patent on Retin-A, an anti-acne drug also said to reduce wrinkles on the skin. The case is likely to be watched closely by administrators at other universities because it demonstrates a willingness on the part of a major research institution to seek legal recourse against a faculty member - a strategy usually reserved for cases of gross misconduct - in a patent dispute. The suit, filed January 22 in U.S. District Court, alleges that Albert M. Kligman, an emeritus professor of dermatology in Penn's School of Medicine, circumvented the university's patent policy by signing an agreement with Ortho Pharmaceutical Corp., a subsidiary of the New Brunswick, N.J.-based Johnson & Johnson Co., to license Retin-A as a wrinkle cream. Penn alleges that although Kligman did disclose to the university his 1967 invention of a method for using Retin-A to treat acne, he did not disclose his 1981 invention of a method for using the drug to reduce wrinkles (The Scientist, June 12, 1989, page 5). In filing suit against Kligman and Johnson & Johnson, the university also moved to join University Pat-ents Inc., a Westport, Conn.-based patent licensing firm, which sued the professor and the company last May. At that time, the university, which originally was named as an involuntary plaintiff in University Patents' suit, issued a statement saying it preferred "to reach a negotiated, rather than litigated, settlement." But Neil Hamburg, Penn's associate general counsel, says the university's change of position was necessitated because "we were unable to settle the matter without litigation." At issue is whether the invention in question is subject to Penn's pat-ent policy. The university alleges in its complaint that "defendant Kligman did not own the Invention and was obligated to assign the Invention to the University." But the defendants contend that the method of using Retin-A to counteract the effect of aging on the skin was developed by Kligman on his own time and at his own expense, and thus is not subject to the policy. Barry Cooperman, Penn's vice provost for research, says that it's possible the university might consider revising its patent policy, pending the outcome of the case. "If our position is upheld, I don't think we would [change the policy]," he says. But if Kligman and the drug company win the case, "we would have to rethink this, sure." Yet Hamburg asserts that the university believes its current policy, which states that inventions developed using Penn's resources belong to the university, is sufficient. "We think that our patent policy is valid and appropriate and fair," he says. "Dr. Kligman had no reason to believe [the invention] belonged to the university," says Thomas C. Morrison, an attorney representing both Kligman and Johnson & Johnson. Morrison contends that in the years preceding the licensing of Retin-A as a wrinkle cream Kligman has carried out a consulting practice, independent of his duties at the university, that has resulted in the development of a number of products. "He's been obtaining patents for 30 years, and no one's ever questioned it," the lawyer says. Kligman could not be reached for comment. Ortho Pharmaceutical spokesman Rich Salem says officials at the drug company are confident that they and Kligman will prevail: "We feel their [the plaintiffs'] case has no merit." Penn's entry in the case "was quite unexpected" by the drug company, Salem says. But Arthur Lieberman, an attorney for University Patents, says "it was logical that [Penn] would enter the case," because the university did not believe it was "being negotiated with in good faith." Lieberman says he expects Penn's entry into the legal battle will reflect "not unfavorably" on his client's case. A patent administrator at another major research university says he believes the implications of Penn's lawsuit could reach even further. "Penn has shown that it's not unthinkable for a respected institution to take an action like this," says Dillon Mapother, associate dean of the graduate college and associate vice chancellor for research at the University of Illinois. "I think that a lot of people [patent administrators at other schools] will note this case," he predicts. "The question is what they're going to do about it."

University Sues Its Own Professor In Patent Dispute

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