Kent State professor loses grievance filed against university for LCD patent rights

Judy Tompkins

An arbitrator ruled that Kent State had not violated a collective bargaining agreement when it denied physics professor Satyendra Kumar patent royalty distribution for his inventions involving liquid crystal displays.

Kent Research Corporation, a university entity dissolved in 2004, entered licensing agreements with seven corporations. It included Kumar’s patent in the agreement but did not identify Kumar as a primary inventor; therefore, it did not pay him patent royalties that Kumar thought should have been paid to him.

Kumar’s testimony during the hearing said the license agreement was written in such a way that two of his inventions, or patents, were included in the agreement. Other inventors, whose patents were also included, received their share of patent royalties.

The American Association of University Professors, the union that represented Kumar, advocated a broader definition of “inventor” that would include any inventor whose technology is used in a patent licensing agreement regardless of whether his or her name was identified in a licensing agreement.

After reviewing testimony, Arbitrator Patricia Bittle ruled the following: The university does have a policy that requires royalty distribution to the inventor, but it does not provide a policy on how inventors are to be identified. In order to be eligible for a royalty payment, Kumar must prove that he was the “inventor” under the university’s guidelines.

She wrote, if the university were to use the association’s definition of inventor it would only complicate and delay the licensing process because the university would constantly have to reassess and identify the inventors.

“Distribution of income to primary inventors would be diluted by distributions to peripheral inventors,” she said.

University counselor Constance Hawke, who advises the university in matters of technology transfer and intellectual property, said she is glad that the arbitrator found that the university did not violate its patent distribution policy and does not think that it should be revised.

“The unfortunate part is that the university had to spend scarce resources,” meaning outside lawyer fees, she said. “But we are happy with the decision.”

Neither Kumar nor the AAUP had any comments.

Typically, the university has licensed patents to corporations that have generated millions of dollars in revenue through a process called technology transfer. Had Kumar been included in the licensing agreement, he would have received 40 percent of all net revenue, over $5 million dollars.

The remaining revenue would have been allocated to research and sponsored programs, Kumar’s academic unit and Kent State’s general fund. But the exact amount the university received from this agreement is undisclosed.

Kumar, who has been researching and teaching at Kent State since 1987, is the first faculty member to have a patent royalty grievance go under arbitration.

He filed a grievance against the university in June 2004 after he became aware that the Kent Research Corporation did not include his name on the list of patents leased to corporations.

In fall 2004, Bittle ruled that his case could be arbitrated despite the university’s efforts to stop the arbitration. Subsequently, the hearing began in November and continued into May 2004.

Kumar may appeal Bittle’s decision, but it is not known if he will choose to do so.

Contact general assignment reporter Judy Tompkins at [email protected].