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Licensing Agreements
UGARF granted an exclusive license in the field of human medicine to Novartis. Novartis later sublicensed to Allergan, who developed the medical breakthrough dry eye therapy, Restasis®.
UGARF granted an exclusive license to Dr. Kaswan's company KB Visions (KBV) for the veterinary field of use of the invention. KBV registered the trademark Optimmune® and licensed the name and veterinary field of use to Schering-Plough Animal Health, Inc. In 2001, Schering-Plough's human pharmaceutical corporation encountered FDA factory certification problems unrelated to Optimmune® and forced to cease the manufacture of Optimmune® and several other products. At UGARF's urging, KBV issued non-exclusive licenses to compounding pharmacies and veterinarians to produce a generic equivalent of Optimmune®.
When they received notice of patent violations. UGARF sent out “cease and desist” letters, but later preferred Dr. Kaswan to take over this duty. When lawsuits were required, Dr. Kaswan informed UGARF. They replied with approval or no response at all. KB Visions was the petitioner, but UGARF occasionally had to be a co-petitioner as the assignee of the patents.
In the letter conveying the intent to recant on their agreement to revert patent assignment to Dr. Kaswan, UGARF complained about Dr. Kaswan's efforts to protect the Optimmune® patent, but did not invoke the notice/cure provisions of the licensing agreement. UGARF continues to collect royalties from KB Visions.
Major Issues
- UGARF filed nuisance lawsuits against Dr. Kaswan to coerce her to relinquish her claims to controlling ownership of the patents. Coinciding with this, they threatened to terminate her veterinary field of use license agreement for Optimmune®. UGARF also suspended tender of her inventor's share of royalties on Restasis®.
- Allergan and UGARF conducted closed-door secret negotiations for a lump sum buy-down of future royalty payments that was substantially less than market value. As part of the deal, Allergan would give UGARF $1 million toward its legal fees and assign Allergan's expert legal counsel to control the legal strategy to defeat Kaswan, and ultimately UGA's best interests.
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