Why I filed a breach of contract lawsuit against RPI

Editor's Note: The following letter has not been edited to conform with Polytechnic style guidelines and does not necessarily represent the views of The Poly or its members.

Dear RPI community,

You may have seen the Times Union article published a few months ago or heard that I and my startup entity, Orion Polymer Corp. (“Orion”), filed a lawsuit against RPI. The lawsuit seeks remedies for breach of RPI’s commitment to me as a faculty member (and Orion) with respect to commercialization of a patent for an innovative “clean energy” technology which received the recognition and sponsorship of the U.S. Department of Energy.

At RPI, we educate students not only in the classroom but also with hands-on experience in groundbreaking research for innovative technologies. When new intellectual property is developed using RPI’s facilities/resources, our internal policies and procedures require that RPI take ownership but, in return, the Institute promises collaboration with the faculty and student inventors to pursue commercialization opportunities. This arrangement is fair if it is honored. Unfortunately, the institution failed me and others in this important respect. I am dedicated to preventing this from ever happening again either to myself, students or colleagues.

By way of introduction for those not familiar with me or my work, I am the Ford Foundation Professor of the Department of Chemistry and Chemical Biology at RPI. I am the lead inventor on various patents and applications pertaining to my research while employed at RPI, including, but not limited to, a new class of anion exchange membranes (AEM) that can play a key role in a variety of “clean energy” technologies, such as green hydrogen production by splitting water. By 2020, I achieved many active grants while at RPI, maintaining an average of $1.5 million annual research expenditure.

Orion’s products, utilizing the foregoing AEM technology, were developed and successfully marketed in a test-year under a temporary license with an option to convert the license into a permanent exclusive worldwide license so as to continue commercializing the product(s). In fact, with significant effort, cost and personal sacrifice, including the formation of Orion, we achieved beyond expectations, created substantial opportunities and established a world-wide reputation for our high-quality product(s) during our initial year of operation.

The option, as agreed between Orion and RPI’s Office of Intellectual Property Optimization (“RPI-IPO”) (formerly, the Office of Technology Commercialization), required the parties to negotiate the terms and conditions of the permanent license in “good faith.” Despite several unexpected RPI delays, the parties reached agreement on all material terms and conditions required under the temporary license. However, without reasonable justification, RPI-IPO abruptly ended the negotiation and later sought a license with a third party start-up without discussion with its faculty inventor and entrepreneur. This is a violation of RPI-IPO’s own policy. Eventually RPI-IPO granted a permanent exclusive license to this third-party start-up without consulting me, giving up the entire commercial right of decades of my research accomplishments. So far, the licensee has substantially shelved the RPI intellectual property for the past four years while only paying the $5,000 minimum annual royalty to RPI. In the end, RPI put its short-sighted monetary interests before those of a member of its faculty, the inventor, who developed and commercialized the technology.

In the Times Union article, RPI claimed that RPI-IPO terminated Orion’s license negotiation because of Orion’s affiliation with another start-up company owned by one of Orion’s co-founders. This claim is false pretense as I removed the co-founder from Ownership well before RPI’s granting such a license to the third party start-up, thus clearly eliminating this purported reason for not granting the permanent license to Orion. Moreover, back in January 2020, RPI-IPO gave its formal written reason for the termination of negotiations with Orion, i.e., that the option wasn’t exercised in time. This reason is also untrue and completely contrary to RPI’s current position in their most recent motion filed with the NY Supreme Court in 2024.

Bringing this lawsuit forward has been exceedingly difficult for me and my family, and it isn’t something undertaken without considerable apprehension and financial cost. I have always felt a great deal of pride and kinship in RPI’s academic community, but I sadly write this as a warning to other RPI inventors about its bad faith technology transfer and licensing practices, devoid of empathy and respect for its faculty and students.

The lawsuit was filed in the fall of 2023 and is still ongoing. RPI continues to take the position that it “did nothing wrong.” Hence, the lawsuit continues at great expense to all parties.

Sincerely,

Chulsung Bae, Ph.D