Tech Transfer eNews Blog

Lawsuit charging prof stole student’s IP highlights need for layers of due diligence

By Jesse Schwartz
Published: April 17th, 2019

Technology transfer personnel often talk about how hard it is to get to the finish line with a promising IP asset. This means getting the IP properly developed, licensed and commercialized so that the university and contributing inventors are then on the receiving end of a windfall that can potentially fund research and improvements at the institution for years to come. It’s a rare and wonderful occurrence, to be sure. Cause for celebration.

However, what if all those very difficult steps occur, but somehow the rightful inventor and the university are cut completely out of the deal? This is also a very unlikely occurrence, one would think, but it is precisely what the University of Missouri in Kansas City (UMKC) is alleging has taken place there.

In a lawsuit filed in March, the university accuses pharmacy professor Ashim Mitra of stealing a student’s discovery and then selling it to a pharmaceutical company behind the university’s back, defrauding the institution of millions of dollars.

The IP in this case involves a more effective way to deliver drugs to the eye. The suit names Kishore Cholkar, a former student of Mitra’s, as the rightful inventor, and Cholkar concurs, indicating to reporters that he was the only student who worked on the invention and that he was cheated out of any credit for the discovery as well as any resulting proceeds.

The suit states that Mitra has already pocketed more than $1.5 million from the sale of the discovery, and that he has the potential to earn as much as $10 million in royalties over the next decade. Court documents indicate Mitra sold the discovery to Virgin Islands-based Auven Therapeutics Management, which then resold the invention to Sun Pharma, based in India, for $40 million dollars and forthcoming royalties.

Sun Pharma has since won FDA approval to market a drug for dry eye which is based on the discovery. Mitra denies the accusations, saying he is the inventor of the technology. Indeed, a 2015 patent for the technology in question names Mitra and an Auven employee as the inventors, according to the lawsuit. However, in the midst of the whole mess, Mitra has officially resigned from UMKC.

Meanwhile, the litigation ensues. Named in the university’s suit are Mitra and his wife Ranjana, who worked as a research associate at UMKC, as well as the couple’s company, Mitra Consulting Services Inc. The suit also names the two pharmaceutical companies involved.

How did such a potentially valuable invention get so far down the road without the university or other stakeholders blowing the whistle sooner? That’s unclear at this point, but the fact that that it did makes one wonder what TTOs could be doing to ensure that they never experience such a case.

While there is no foolproof hedge against dishonesty, experts tell TTT that there are things universities and TTOs can do to guard against later-stage disputes over inventorship, royalties or other matters — the kind of disputes that can sabotage commercialization and lead to costly litigation.

A detailed article advising TTOs on precautions and procedures to prevent inventorship-related dispute appears in the April issue of Technology Transfer Tactics. For subscription information, CLICK HERE.

Posted under: Tech Transfer e-News

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