UPDATE: UM System sues professor over patents

Wednesday, January 28, 2009 | 10:44 p.m. CST

COLUMBIA — A long-running dispute between MU and one of its professors over intellectual property is headed to federal court.

The UM System filed a lawsuit Monday in U.S. District Court in Kansas City against chemical engineering professor Galen Suppes. The system claims Suppes won't release the rights to more than 30 inventions and 11 potential patents it says were developed in his UM labs.

According to the legal complaint, Suppes and his business partner, William "Rusty" Sutterlin, "schemed to deprive the university of its ownership rights" and caused a loss of business opportunities and an undetermined amount of royalty income.

In a Jan. 21 letter notifying Suppes of the forthcoming suit, a Kansas City lawyer hired by MU warned that it was a last-ditch response in a feud which stretches back to 2001, soon after Suppes was hired away from the University of Kansas.

"Your continued refusal to comply with the university's requests, its rules and the rulings of the university's Patent Committee has left (us) with no choice but to pursue its rights in court," Russell Jones Jr. wrote in the letter provided to The Associated Press by Suppes.

Jones did not immediately respond to a request for comment Wednesday.

MU Provost Brian Foster said a statement that the "lawsuit is a last resort to assure that the University’s ownership of inventions made by University employees during their employment is protected. It is vitally important to secure for the people of the state of Missouri the full benefits of research done by the University of Missouri.”

In 2003, Suppes and Sutterlin formed the spin-off company Renewable Alternatives, which they hoped would help commercialize their work with glycerin conversion, nontoxic diesel-fuel additives and fuel-cell technology. Sutterlin received his doctorate from MU and worked there as post-doctoral fellow. He has since moved to Tuscaloosa, Ala.

In a series of interviews with the AP both before and after the lawsuit was filed, Suppes said that MU has failed to properly recognize and aggressively pursue the commercial prospects of his research. He also alleges the school has a faulty process for deciding how to waive its legal rights to inventions deemed to lack the potential to make money.

"The university has exercised incredible neglect in the handling of invention disclosures," he said. "The MU tech transfer program is totally broken and basically beyond repair."

To bolster his argument, Suppes pointed to MU statistics showing that the number of inventions returned to professors when it decided to not pursue a patent plummeted after 2000.

In the previous decade, the legal rights to such inventions were released back 128 times. But from 2000 through 2007, that happened only seven times.

Scott Uhlmann, director of intellectual property administration for MU, attributes that decline to a technology transfer funding boost at the start of the decade that led to significantly more patents — and a concurrent drop in requests for waivers.

Christopher Fender, acting director of MU's Office of Technology Management and Industrial Relations, said it's in MU's best interest to help researchers bring their science to the marketplace.

"We want to work with them and give them the tools that offer the best chances to succeed," he said. "At the end of the day, if the company is successful, the university shares in that revenue."

Suppes said he believes it's that pursuit of royalties, not any allegiance to its researchers, that drives the university's decisions.

"The only time they showed interest is when I informed them that royalties had been paid," he said.

He cited numerous e-mails, disclosure forms and other updates he offered to campus patent lawyers and technology administrators that went unheeded until the money started flowing. The lawsuit charges Suppes and Sutterlin with filing "multiple patent applications" without telling the university, as required under campus rules.

“The bottom line here is that the people at the bottom of the chain did not provide the full story to each consecutive layer of administration,” Suppes said in an e-mail sent to the Missourian. “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.”

Suppes said that because of this, he filed a grievance against several administrators in January 2008.

Calls to the MU News Bureau by the Missourian to confirm the filing of the grievance were not returned Wednesday.

In the lawsuit filed Monday, MU seeks a full and complete disclosure and an accounting of all inventions made by Suppes and Sutterlin since their employment began, and an order requiring the men to refrain from licensing, assigning or transferring all the inventions in question, among other stipulations.

Missourian reporter Linden Wilson contributed to this report.

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