24 January 2023

Ownership of academic inventions: ‘The Oxford Decision’

A recent judgement has been handed down relating to ownership of employee inventions in an academic context which is of relevance to all universities in the UK. The decision of Oxford University Innovation Limited (OUI) vs Oxford Nanoimaging Limited (ONI) was handed down at the end of December 2022, relating to the fairness of revenue split and ownership of invention between OUI and ONI; the judge finding in favour of OUI.

The key issue was whether, or to what extent, OUI were entitled to the rights of inventions made by inventor Mr Jing which was made more complicated by Mr Jing having been a research intern and subsequently a DPhil student at the University of Oxford.

OUI are a wholly owned subsidiary of the University of Oxford and manage the university’s technology transfer and consulting activities. Formed in 1987, OUI has managed the creation of 196 spinout companies and still has shares in 160 of them. ONI is one such spinout; they are a biotech company that focus on making desktop-sized super-resolution microscopes. They were formed in early 2016 and supported by OUI in return for equity to commercialise the research work of Mr Jing (then a DPhil student), Professor Achillefs Kapanidis and Dr Crawford.

Under its statues (specifically Statute XVI, Part B) the University of Oxford owns any intellectual property (IP) created by employees, students or anyone using their facilities, with the IP then being assigned to OUI. In this case, the IP was licenced to ONI in return for 50% equity; OUI bringing the case to court as it claimed around £700,000 in unpaid royalties as a result of their equity share, with ONI refuting that OUI had the rights to them.

One issue the case revolved around was whether Mr Jing was considered to be a ‘consumer’ and thus would be offered protection under the Consumer Rights Act of 2015. The judge commented that there was little case law to guide his decision, instead relying on two guidance notes published by the Competition and Markets Authority in 2015. These describe how undergraduate students are generally to be considered consumers for the maintenance of student confidence in the Higher Education (HE) sector, even if they seek to pursue a career related to their studies in the future. From this starting point and equating features of their respective courses (requirement for certain careers, payments to a HE body etc.), the judge found that in general a DPhil student should also be treated as a consumer. The judge found no reasons specific to Mr Jing in this case that he should not be treated as a consumer.

Another issue the court sought to answer, having concluded Mr Jing to be a consumer, was whether the university’s IP Statute were ‘unfair’ within the meaning of the Unfair Terms in Consumer Contracts Regulations. The judge commented that he felt Mr Jing was defending the case to improve the position of students within the university, rather than doing so for personal benefit. ONI defended on grounds relating to fairness, wording, and implementation of the university’s IP policy.

Despite finding the IP policy to be poorly and too broadly worded, the judge ruled that the policy had been implemented fairly, especially in light of an IP Advisory Group meeting in 2017 that decided to amend the policy to improve its accuracy and ease of understanding and application. For comparison, the judge discusses other UK and US institutions and their share of equity in related inventions. In the US these range from 5% at Massachusetts Institute of Technology (MIT) to 100% at California Institute of Technology, and in the UK from 20% at the University of Cambridge to 67% at the University of Bath. These are however just headline figures; Cambridge for instance stating their share to be negotiable whilst there is nothing said of non-equity benefits received (such as research funding) due to promotion by an organisation such as OUI.

This case once again raises the question of ownership of invention. Although OUI did not challenge that Mr Jing alone devised the licensed IP, his position as an intern for seven months, prior to commencing his DPhil studies, and the unusual way in which he was employed (being contracted on a three month contract but paid for seven months) could have become a focal point within proceedings had ONI distinctly raised this issue. As it was, Mr Jing was under the university’s IP Statutes which at the time required equity to be split equally between the inventors and the university. The judge didn’t find this to be unfair, however it is interesting to note that Oxford University have since updated and modified their equity split in favour of inventors: the default equity split is 80% for founder researchers and 20% for the university with a 90/10 share being agreed in some situations.

The judge found that OUI’s equity split was within the range of other UK universities and that the concept behind the successful microscope design had been developed in an Oxford lab, by an Oxford professor and assisted by a team of researchers funded by research councils. OUI was therefore well within their right to claim their share of revenue due to the support they provided to ONI.

As a result, the judge found that OUI were entitled to the royalties from the success of ONI. The judgement here should however serve as a reminder to ensure any policy or agreement relating to IP is clear and understood by all parties involved. It further exemplifies the need to agree on IP ownership in an academic context, particularly when there may be a power imbalance between senior and junior members of a HE body.