Dividing The IP Pie

• Jurisdiction: European Union
• Law Firm: Marks & Clerk
• Subject Matter: Intellectual Property, Patent
• Author: Melissa Lever
• Published date: 10 February 2023

Universities provide a nurturing environment for innovation and a clear path for the commercialization of inventions through their technology transfer offices. In exchange for these services, university-based inventors are obliged to give the university a share in their IP rights and revenue. But do universities get more than their fair share? The landmark case Oxford University Innovation Limited v Oxford Nanoimaging Limited [2022] EWHC 3200 (Pat) assesses this question, in particular when the inventors are students.

The claimant, Oxford University Innovation (OUI), sought unpaid royalties of over '700,000 from Oxford Nanoimaging (ONI) in respect of a patents for a nanoimager developed by Mr Jing, now CEO of ONI. The nanoimager, which is a type of microscope, was developing during Mr Jing's time as an intern, and subsequently DPhil student, at Oxford. Mr Jing then left Oxford to develop spin-out ONI based on the nanoimaging technology, with the help of OUI. Oxford's IP provisions gave OUI entitlement to the patents, which were licensed to Mr Jing in return for a share of the royalties. However, Mr Jing refused to pay outstanding royalties to OUI, arguing that the university's IP provisions were unfair to students.

Oxford's IP provisions currently require that OUI receives 30% of the royalties, with the remainder being split between the inventors, a general fund, and the department where the invention was made. The inventors must agree on how they divide their share of the royalties, and Mr Jing alleged that the split he agreed to (ultimately a 45:45:10 split to him, his supervisor, and another academic) was unfair.

Mr Jing also criticized the equity share that OUI has in ONI. At the time the nanoimager was being developed, Oxford's equity policy set out a...