Oxford University Innovation Limited v Oxford Nanoimaging Limited [2022] EWHC 3200 (Pat)
Dispute over the ownership of IP created by a postgrad student at Oxford University. A postgrad, Mr Jing, was given the task of developing a compact fluorescent microscope by the University’s physics department pending and during his PhD. Under the University’s IP policy, the resulting IP belonged to the University, with any royalty income to be shared with Mr Jing and his supervising Professor. The claimant, the University’s technology transfer arm, secured patent protection for the microscope. It arranged for the incorporation and funding of the defendant to commercialise the microscope under licence and gave Mr Jing a leadership role and a significant equity stake. The defendant ceased paying royalties under the licence, arguing that the University’s IP policy amounted to an unfair term in a consumer contract. The Court (Daniel Alexander QC sitting as a Deputy Judge of the Patents Court) rejected that argument, affirmed the licence and ordered payment of royalties. The judgment contains a detailed discussion of the IP policies of universities generally.
Tom Alkin appeared for the Claimant/Third Party.