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Former Harvard PhD student claims he was cheated out of patent royalties, sues university for $10 million

Posted by Your Town  July 2, 2013 01:39 PM

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A former Harvard PhD student is suing the university and a professor who he worked with to uncover a new type of antibiotics, alleging that Harvard failed to give him a promised amount of royalties, which he calculates total $10 million.

Mark G. Charest, a former PhD student at Harvard, filed a lawsuit in US District Court making a number of allegations against the university and his professor Andrew G. Myers, including breach of contract and fraud.

In 2004, Charest and his colleagues discovered a way to “synthetically make a new class of tetracycline antibiotics,” the lawsuit said. The suit said it was an important discovery because the antibiotics could fight bacteria that had been previously untreatable.

The court filing says Charest was one of the five inventors for this class of antibiotics.

Harvard’s policy is for inventors to split the royalties evenly amongst themselves, unless they agree to other terms. But according to Charest, he was bullied and tricked into taking a lower percentage than he was entitled to.

All of the inventors, with the exception of Charest, agreed to allocate a much greater percentage to Myers. When Charest protested, Myers allegedly threatened him. According to the complaint, he told Charest to “tread lightly,” “be careful,” and “to think of [his] career.”

The complaint says that Charest was told that if he did not accept the proposed distribution, Harvard would cut his share to 10 percent.

In a statement released Tuesday, Harvard denied the allegations, writing that “Harvard’s intellectual property was properly designed, and appropriately implemented with respect to Dr. Charest and his contribution to the advances in synthetic tetracycline antibiotics that occurred in Dr. Andrew Myers' laboratory. Dr. Charest and three other non-faculty inventors who, along with Dr. Myers, contributed to one of the inventions described in the suit, all approved of the royalty share that they received.”

The lawsuit also contends that in 2009, Harvard cut Charest’s share nearly in half, by unjustly reallocating 45 percent of his inventor royalties to another patent. According to the complaint, Charest does not receive royalties on this new patent.

But the statement issued by the university said Charest agreed to the reallocation.

“Dr. Charest agreed to abide by Harvard’s appeals process regarding the reallocation of royalties once Harvard licensed a second patent for an invention in which Dr. Charest played no part,” the statement said. “A panel of disinterested faculty experts reviewed and rejected Dr. Charest’s assessment of the value of his personal contribution to the tetracycline inventions.”

Charest's lawyer, Brian O'Reilly of O'Reilly IP, issued a statement on Wednesday in which he refuted Harvard's statement, writing, "Dr. Charest never agreed to abide by the Harvard appeal panel decision. In fact, Harvard has withheld royalties already accrued to Dr. Charest because he refused to recognize the propriety of appeal panel's decision to reallocate royalties to the later added method patent."

He added that, "Harvard is also incorrect that the appeal panel considered and rejected the value of Dr. Charest's 'personal contribution to the tetracycline inventions.' No one, including the appeal panel, has ever questioned Dr. Charest's personal contribution to the groundbreaking tetracycline inventions. The only issue before the panel was the relative value of the pioneering tetracycline patents and the latter added method patent."

Katherine Landergan can be reached at klandergan@globe.com. For campus news updates, follow her on Twitter @klandergan.

Looking for more coverage of area colleges and universities? Go to our Your Campus pages.

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