Pitt's OTM was established specifically to manage intellectual property development, including applying for patents and issuing licenses on technology developed within their walls. On its web site, Pitt's OTM says that it "employs intellectual property protection experts..." But during the period from 1993-2003, during the invention disclosure and patent application period, if the OTM was not aware of what was happening, what then was their level of involvement and what value did they contribute?
If there were any damages suffered, was Pitt’s OTM responsible? By not following its own policies and procedures, not reviewing Dr. Townsend’s consulting agreement and being unable to provide years of their researcher’s conflict of interest forms, what diligence was exercised?
Further, while Pitt put a number of expert witnesses on the stand, none of Townsend's peers from the University of Pittsburgh who had worked side-by-side with him ever testified in the litigation. According to Townsend, not one of his fellow researchers wanted to be involved in the lawsuit Pitt had fabricated against Townsend.
Judge C. Clifford Shirley, Jr. of the U.S. District Court in Knoxville, Tennessee rejected Pitt's arguments. Although the court's decision cited the lapse of the statute of limitations in its ruling, in fact, Judge Shirley had heard the breadth of evidence presented by the university before he ruled against them.
The court agreed that Dr. Townsend had not concealed anything from the university and had, in fact, repeatedly informed them of the status of his research and the patent process. Even if the university had any legitimate claims to Townsend's work, the court said, "The time to act on them had long passed".
Both the U.S. District Court in Tennessee, as well as the U.S. Sixth Circuit Court of Appeals, rejected the university's accusations and ruled in favor of defendants Townsend, Nutt and CTI PET Systems.
In the summary judgment, Judge Shirley said, "The University... had been given notice of the commercial viability of Dr. Townsend's invention, his failure to assign rights to the university, and the defendants' pursuit of a patent related to the invention. Furthermore, the University was provided documents which, had they been adequately reviewed, would have revealed that Dr. Townsend had already assigned his rights in the invention to CPS."
This type of behavior by universities may become more common, Townsend said, "as cash-strapped universities chase intellectual property dollars that rightfully belong to their faculty researchers." He continued, saying "many of these cases go unreported, as the threat of legal action alone prompts researchers to accede quietly to their employers' demands."
On why this behavior by universities is on the upswing, Townsend answered, "...because the universities are more and more desperate for funding. They look upon taking this intellectual property as a way of generating a huge amount of funds."
In the years since its release, the combined PET/CT has become the imaging method of choice for oncologists and by 2006, had completely eliminated the market for the stand-alone PET scanner. To date, both Dr. Townsend and Dr. Nutt continue their life-saving research in the field of medical imaging technology.
Alarming but true, academic inventors must educate themselves on university intellectual property policies and practices, as well as the provisions of the Bayh-Dole Act. In theory, the Technology Transfer Office of a university should operate in the mutual best interests of the university and their faculty and manage the process, from invention to licensing, knowledgeably and with integrity.
However, there is a growing trend in university technology commercialization toward litigation with faculty scientists. The profitability of an invention may tempt university administrators to take questionable actions , disregarding the long term consequences of such action on the university's integrity and reputation.