Case

$2$

A faculty member at a U

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S

$.$

$$university met a very bright young postdoctoral fellow at

a meeting in Germany. The postdoctoral fellow was working for a company in Ger

many and had a new chemical entity that could be developed into a product to pre

vent one type of urinary tract infection. Animal testing had already been conducted,

with very promising results. The postdoc then came to the United States to work for

the university faculty member, with support from the German company. The German

company, through its subsidiary in the United States, submitted an investigational

new drug application to the FDA in order to start Phase I clinical trials on humans.

Later that year, a French company acquired the German company. In the meantime,

the postdoctoral fellow met a colleague at a meeting at a different U

$.$

S

$.$

$$university and

collaborated to test the new chemical entity. They discovered a new modality to treat

another disease with the same chemical entity. At this time, the faculty member

$$

s

U

$.$

S

$.$

$$university was negotiating with the French

$/$

German company to have the re

search conducted at the university

$$

s facilities. From the start, the French

$/$

German

company demanded sole proprietorship of the drug and wanted to control all aspects

of its R&D

$.$

$$The university then asked the postdoctoral fellow to sign a visiting fel

lowship agreement assigning all IP claims to the university. The postdoctoral fellow

refused, on the advice of the French

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German company. Meanwhile, the French

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German company filed for a patent alone without any mention of the part of the work

conducted at the university.

$$

$$ What should the university do

$?$

$$What should the university faculty member do

$?$

$$

$$ Who owns the patent? Is the patent application valid?

$$

$$ What should each party have done in the first place?