Tech Transfer eNews Blog

Yale and one of its professors agree to pay over $1.5M to VA over patent dispute

By Jesse Schwartz
Published: September 27th, 2023

Yale University and one of its professors have agreed to pay over $1.5 million to resolve allegations that they failed to disclose certain patents and share patent royalties with the Department of Veteran Affairs (VA). The settlement was announced by the U.S. Department of Justice Civil Division, which had brought the civil charges.

The allegations surround inventions by Yale professor John Krystal, who worked for both institutions when he and four co-inventors applied for several patents related to the use of intranasal ketamine for the treatment of depression and suicidal ideation.

The VA and Yale are parties to an agreement under which both institutions pledged to promptly and in confidence disclose to each other all “Joint Inventions,” including “any future invention or discovery, which is or may be patentable… in which at least one employee with compensation from the VA and at least one person who has an appointment with Yale is named as a co-inventor.”

The VA alleged that Yale never shared the royalty payments it received from the ketamine patents — a total of more than $3 million, starting in 2015 — and that Yale didn’t disclose the patents to the VA until 2017. In addition, the VA alleges that in 2017 and again in 2019, another school submitted documents to the U.S. Patent and Trademark Office, in coordination with Yale and professor Krystal, that removed acknowledgement of VA support from the ketamine patents.

The recent settlement of $1,507,743.67 resolves allegations that, during this time period, Yale and professor Krystal were in breach of contract and knowingly and improperly avoided their obligations to disclose the patent to the VA and pay the agency its share of the royalty payments.

“Universities and their professors must properly disclose and share royalties on inventions they discover while working for the government,” says Principal Deputy Assistant Attorney General Brian M. Boynton, head of the Justice Department’s Civil Division. “The department will ensure that those who benefit from government funding and resources properly compensate the taxpayers.”

“It is critical that inventions funded with taxpayer money be fully and timely disclosed to the government,” said U.S. Attorney Vanessa Roberts Avery for the District of Connecticut. “This settlement shows our commitment to ensuring that the government is fairly compensated for all taxpayer funded inventions.”

Source: U.S. Department of Justice

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