NEUROCEL, INC.
William G. Marshall, Jr., Joseph A. Knight, & Michael W. Fountain
University of South Florida
Case Objectives and Use
These cases (Cases A & B) are designed to demonstrate the multiple issues and requirements within the patent process, particularly as related to technology transfer from University laboratories to technology start-up firms. These issues include: inventorship, ownership of the intellectual property, technical feasibility and “proof-of-principle”, public disclosure, and decisions regarding patent applications in multiple countries, the costs, regulations, and time frames involved. Appropriate planning, documentation, and legal counsel are mandatory for optimal and successful management of these issues. These issues raise significant strategy issues, in addition to scientific, technical, and legal issues. The case also demonstrates the problems which arise when individuals inexperienced in these matters, despite significant credentials and success in other fields, attempt to navigate the many considerations. The case was written for business school graduate courses in business strategy, technology entrepreneurship strategy, and intellectual property. It can also be used in executive education and legal courses.
Case Synopsis
The initial case (Case A) demonstrates the issues that occur when a U.S. physician-scientist attempts to patent a potentially paradigm-changing biotechnology discovery with a friend at a University in Korea. The U. S. physician, Dr. Adams, plans to file a U.S. patent on the technology, with full knowledge and agreement of his friend and colleague from Korea, Dr. Wan. A new company is formed by the two friends to further develop and commercialize the technology. The processes of the patent are totally foreign to the partners and the costs are discovered to be substantial, particularly for a biotechnology new start-up. The Founders must decide whether to use the University of Central Maryland (UCM) Office of Technology Licensure for assistance or patent the technology through their newly-founded company considering the costs versus the potential loss of control of the intellectual property.
Case B outlines the issues faced by the OTL Director, Jack Willett, including his own professional considerations and quandaries, when asked to consider assisting, within the construct of the University OTL, the Founders of NeuroCel, Inc. with the patent processes. There are multiple unknowns, questions, and issues the OTL Director must answer about the technology, including inventorship, ownership, and technical “proof-of-principle”, before a decision can be made whether to proceed with the patent application.
The authors developed the case for class discussion rather than to illustrate either effective or ineffective handling of the situation. The case, instructor’s manual, and synopsis were anonymously peer reviewed and accepted by the North American Case Research Association (NACRA) for its annual meeting, October 27-29, 2005, North Falmouth, MA. All rights are reserved to the authors and NACRA. © 2005 by William G. Marshall, Jr., Joseph A. Knight, and Michael W. Fountain. Contact person: William G. Marshall, Jr., College of Medicine, University of South Florida, 12901 Bruce B. Downs Blvd., MDC 61, Tampa, FL 33612; 813-974-7663;