NEWS OF THE WEEK INTELLECTUAL
PROPERTY
Greenfield & Sacks, Boston, an intellectual property attorney with a doctorate in inorganic chemistry, comments that "the percentage of net patent royal ties flowing to inventors under Yale's current policy is quite gen erous when compared with oth er universities, and certainly when compared with industry. If Dr. ALE UNIVERSITY HAS WON A the patent, it claimed rights to it Fenn indeed induced Yale not to patent dispute with a for and asked Fenn to reassign it to file a patent application on the mer faculty member, chem the university, but Fenn refused. invention by intentionally down istry professor John B. Fenn, 87, Fenn sued Yale, the university playing its significance, he made now of Virginia Commonwealth filed a counterclaim, and the U.S. an improper and highly atypical University Richmond. In a court District Court in Hartford decid decision as a professor." decision dated Feb. 8, Yale was ed the case in Yale's favor in a pre "We are pleased by the court's awarded damages of more than liminary decision in 2003. The vindication ofthe Yale patent pol $ 1 million and was assigned own court found that Fenn "misrepre icy," says Thomas Conroy, Yale ership of one of the basic patents sented the importance and com deputy director of public affairs. on electrospray ionization mass mercial viability of the invention, " Yrie has the greatest respect for spectrometry ... actively discouraged Yale from Dr. Fenn as a scientist. We made While at Yale in the late 1980s, preparing and filing a patent ap repeated attempts to mediate Fenn developed ESI-MS for the plication," and wrongfullyfiledone with Dr. Fenn." analysis of large molecules, such himselfwithout notifying We and "I filed for a patent because as proteins. That work won him the National Institutes of Health, Yale didn't," after the university a share of the 2002 Nobel Prize which helped fund the work. decided there was insufficient in Chemistry. Unbeknownst to In this month'sfinaldecision, commercial interest, Fenn tells Yale administrators, Fenn applied the court ordered that Fenn pay C&EN. "Then Yale found out it for a patent, and it was approved Yale damages—$545,000 in mis was worth a substantial amount in 1992, with Fenn as assignee. directed royalties and penalties of money and said I stole it."Two Fenn licensed it to Analytica and about $500,000 in attorney earlier electrospray patents were of Branford, Conn., which he co- fees —and that the patent be assigned to Yale and were even founded. Analytica then subli transferred to Yale. Fenn "is guilty more valuable, he notes. Fenn de censedrightsto instrument mak of civil theft," it concluded. nies the theft charge and says he ers. When Yale found out about Timothy J. Oyer of Wolf, intends to appeal.—STU B0RMAN
YALE RECOVERS LUCRATIVE PATENT
Decision resolves dispute with Nobel Laureate over mass spec technique
Y
HONORS
National Academy Of Engineering Elects New Members
T
he National Academy of Engineering (ΝΑΕ) has elected 74 new members and 10 foreign associates. They bring the total U.S. membership in ΝΑΕ to 2,195 people and its for eign associate membership to 178 people. New members and foreign associates who are chemists or chemical engineers or who work in chemically related areas in clude the following:
NEW MEMBERS Harvey W. Blanch, University of California, Berkeley; Chau-Chyun Chen, Aspen Tech nology Inc., Cambridge, Mass.; Joseph M. DeSimone, University of North Carolina, DeSimone Chapel Hill; Dominic M. Di Toro, University of Delaware, Newark; Gerald 6. Fuller, Stanford University; George Georgiou, University of Texas, Austin; Carol K. Hall, North Car-
HTTP://WWW.CEN-ONLINE.ORG
olina State University, Raleigh; Allan S. Hoffman, University of Washington, Seattle; James 0. Leckie, Stanford University; Frances S. Ligler, Naval Research Laboratory, Washington, D.C.; Subhash Mahajan, Arizona State University, Tempe; Danny D. Reible, University of Texas, Austin; Subhash C. Singhal, Pacific Northwest National Laboratory, Richland, Wash.; Jeffrey Wadsworth, Oak Ridge Na tional Laboratory; George M. Whitesides, Harvard University; and Ralph T. Yang, Uni versity of Michigan, Ann Arbor.
NEW FOREIGN ASSOCIATES Whitesides
Mkhele B. Jamiolkowski, Technical University of Torino, in Italy; Ora Kedem, Weizmann Institute of Science, Rehovot, Israel; and Nikolay P. Laverov, Russ ian Academy of Sciences, Moscow.-SUSAN M0RRISSEY
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