Dispute Details

Primary Issue(s) Encountered

As with every dispute, there are two opposing sides, as in this case, inventor and University. The University of Missouri, simply put, wants to own every innovation that Dr. Galen J. Suppes, a chemical engineer on staff there, develops. Seems straightforward enough and it would be if Suppes had confidence in how the University was stewarding his intellectual property.

Universities have specific concerns when it comes to commercializing research. Raising discretionary funds and monies for further research is a primary driver. However, good publicity from a home run innovation is also important for attracting and retaining top faculty scientists.

For the academic inventor himself, as in the case of Galen Suppes, profit is only one of many motivations for innovation. A main concern is patenting and commercializing research results in a manner to benefit society and allow him to continue and further his work. But also key to a professor is establishing their professional reputation to secure promotions and attract funds for ongoing research. But over the years he has been with Mizzou, Suppes experienced growing concerns over the management of his intellectual property by the University's technology transfer office. In order to build upon prior research, licensing deals must be carefully constructed so as to not preclude this action by the inventor or limit their ability to raise funds to continue their work.

For their part, the University of Missouri accused Dr. Suppes of submitting altered invention disclosure forms without notifying technology transfer personnel of the modifications; of not rightly assigning innovations to the University; of filing patent applications on research the University rightly owned. The University is also seeking a blanket assignment by the court of all of Suppes' innovations to them as well as damages, attorney fees and other costs incurred by Mizzou associated with the lawsuit.

Suppes has not only said "not guilty" to these accusations but furthermore that he has been the victim of "incredible neglect" by the MU tech transfer program which he says is "totally broken and basically beyond repair." And Suppes is not the only faculty scientist at Mizzou with misgivings about the technology transfer process at their University. In the past two years, two faculty committees have recommended changes in how the University commercializes research. One of these groups recommended review of several similar institutions, including the University of Alabama and Texas A&M with much less restrictive intellectual property policies.

Missouri also has a vocal critic in Dr. Jeffrey Phillips, inventor of Zegerid, a profitable acid reflux pharmaceutical. In 2008 Zegerid had sales exceeding $100,000,000, of which University of Missouri receives five percent, making him their biggest royalty earner. But according to Phillips, getting to this point has been "an atrocity" and that the technology transfer personnel at Mizzou are "really not very good at it."

He attributes the success of his invention not to the University, "but in spite of the University" and says he knows a number of fellow MU researchers who "never hear back from the University... who makes you jump through all these hoops and you can't even get the University to pay for a patent." Phillips says he has tried to help these burgeoning innovators, because "you feel sorry for these people because I've been in their situation."

Phillips says that once the ball was rolling, "Then they took it over. When there's a great success, the University is happy to step up and say ‘We're all about tech transfer'." Suppes saw similar apathy and then aggression from Missouri when, "They did nothing," he said "and the only time they showed interest is when I informed them that royalties had been paid. Then, the main thing they could focus on was to try to get the royalties and they still did not conduct due diligence in handling the technology."

Frustrated with inactivity from Missouri's tech transfer office, Phillips and Suppes instigated their respective patent and licensing processes themselves. According to Suppes, it is MU policy to "sit on inventions it has no intention of ever patenting and let the rights to the inventions lapse instead of returning them to the inventors."

This is the circumstance that has lead Suppes to admittedly alter the invention disclosure forms provided by the Technology Transfer Office before submitting inventions to the University. In addition to admitting that he changed the invention disclosure forms provided by the Technology Transfer Office, he clearly labeled the forms as having been altered. In the upper left corner, as the first word on the forms he submitted, is the word "Modified". The University claims that they were never notified that the forms were altered, but if all of the forms Suppes submitted were as clearly labeled as the sample he provided to IP Advocate, the modification is clearly evident.

On his modified form, he declined to grant a blanket assignment of rights to Mizzou and also stipulates that he will have the right to pursue patenting and licensing the innovation if the school didn't plan on patenting and acting on a discovery.

Also, an entire section of the proposal form was deleted. Section 15, Invention Disclosed to and Understood by a Witness, along with a space for the witness' signature were deleted. This deleted section was immediately prior to Section 16 - the area where Technology Transfer Office personnel are to sign verifying their review of the disclosure form.

A subsequent investigative review of the official disclosure forms held by the Technology Transfer Office revealed that Section 16 had not been signed. This was an indicator that either the office never reviewed the invention disclosure or neglected to review it in sufficient detail that they signed off on the review.

"Inventors at MU", Suppes says, "are held hostage by indifferent administrators and reams of red tape that crush faculty morale."

As to issues that he acted without the University's knowledge in filing patent applications and pursuing licenses for his innovations, Suppes says he, "repeatedly tried to settle the differences through arbitration and then through the University's formal grievance process." He said he did assign inventions to them where appropriate and kept them apprised of all patent applications, whether the innovation was assigned to Missouri or not.

In one instance when Suppes did not assign rights to the University, he says "they made broad claims on the technology developed with a former graduate assistant" who had co-founded a company with Suppes that was funding research at the University which led to the invention. Suppes believes that the intellectual property that emerged from this should be jointly owned, but says the University has "tried to claim sole ownership" of the technology they developed to convert glycerol into an eco-friendly anti-freeze. Mizzou has advanced that the graduate teaching assistant's part-time employment with the Department of Chemistry is the overriding determiner that grants it sole ownership of the technology.

Dr. Suppes had hired Dr. Sutterlin, his co-defendant in the Mizzou filed lawsuit, to operate their company Renewable Alternatives, LLC (RA) and was paying Dr. Sutterlin a salary of $80,000 per year. RA funded University research on the glycerol technology. The University signed an Allocation of Rights agreement prior to the innovations that specifically allowed joint ownership between Missouri and RA. Dr. Sutterlin was recognized as one of three inventors of the innovation developed. In defiance of the executed agreement, the University demanded sole rights to the technology on the grounds that Dr. Sutterlin had been paid part-time to help teach a chemistry class, even though it was unrelated to the research efforts.

On two separate occasions, Suppes has requested resolution within the University's own processes, first to the Patent Committee and later to a Grievance Panel. The matter brought before the Patent Committee related to three patents issued to the researcher during his early years at Missouri. Two were simply modifications of patents that had been issued to Suppes prior to his employment there and the third was applied for within the first month of his employment, which resulted in a patent a year and a half into his tenure.

The University claimed ownership rights to all of these patents though the research that led to their issuance had all been done prior to Suppes coming to Missouri. Incredibly, Mizzou's Patent Committee decided that the two patent modifications were rightfully owned by the University and referred the third issue to outside counsel for resolution.

When Suppes appealed to the University's grievance system, it was after a number of e-mails, disclosure forms and other updates were offered to the technology transfer office and its attorneys. But, he says, the information he was providing to the "people at the bottom of the chain" did not make it up the ladder and "by the time it reached the decision-makers in administration, the information was nowhere close to the full truth. When I have asked to meet with the decision-makers to get the facts straight, they have refused time after time."

His frustration with Missouri failing to pursue commercial licensing for his research product and "obstructing him with onerous rules" led Suppes to file a grievance against several administrators in January of 2008. One of the roadblocks the technology transfer office utilized was a requirement that he obtain a million dollars of liability insurance, a constraint not required of private companies licensing technology from the University.