In the aftermath of publicity over a researcher’s legal dispute with the University of Georgia Research Foundation in which the school is defending its handling of $70 million licensing deal with Allergan for the scientist’s dry eye invention, a state legislator wants to examine how the state university system governs its intellectual property. State Sen. Doug Stoner, in an Aug. 22 letter to university system Chairman Richard L. Tucker, said the university should have a uniform policy “to determine the monetary implications of inventions prior to the signing of any agreement to market and sell the product.” Stoner says the state senate may hold hearings on the matter in the next legislative session. His letter — the third one sent by lawmakers to the school administration since the lawsuit flap began — came in response to charges by researcher Renee Kaswan that the foundation made a bad deal for her IP, without her knowledge or consent, which will ultimately cost as much as $222 million in long-term royalties. The dispute was featured in the August 6 edition of E-News. Stoner said that if Kaswan’s allegations are true, the state government should become more involved. “To learn that our flagship university passed up such a sum when, at the time, we were looking at budget shortfalls in the state at large was astonishing,” he wrote. UGA signed a much lower long-term royalty deal than it originally negotiated in exchange for an up-front payment of $23 million, plus additional milestone payments. Kaswan is suing to force the parties to revert to their earlier agreement, alleging that Allergan duped university negotiators into accepting the front-end loaded deal by understating the sales potential for Restasis, the dry eye treatment she developed. Allergan is predicting sales from Restasis of near $400 million this year. The earlier agreement provided for royalty payments of 7% on sales through 2009 and then 5% through 2014. Based on 2008 sales alone, the university and Kaswan would have shared $28 million. Go to: Atlanta Business Chronicle

Posted September 10th, 2008 under Tech Transfer

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