Many important and potentially valuable intellectual property rights can spring up without formality. The most pertinent of these is copyright, but it is also true of unregistered design rights, confidential information and know-how. (For absolute clarity, this is not the case for patents – these follow a complex application and registration process.)
As I explained in an earlier article here, intellectual property rights belong to an employer when a person is employed and to the author where there is a contract for services. But what about students?
Undergraduate students are, to use the language of Whitehall, “service users.” They are buying education services from their university and generally speaking retain ownership of any intellectual property they create in their role as students taking courses. Each university will have its own student terms and conduct/handbook documentation setting out the finer details, but this is the general rule.
However, things get murky once a student shifts into a research-based element or higher degree. For example the University of Oxford highlights on its website that “it may claim ownership to intellectual property which is made …using University facilities or equipment (and)….using funding from the University.” For many science, engineering and technology students, the use of facilities and equipment is an inevitable part of any research whatever the scale.
A legal case from late 2022 brought these issues to the fore. The case heard in the Patent Court (Oxford University Innovation Limited v Oxford Nanoimaging Limited, 2022 EWHC 3200 (Pat)) concerned a claim for royalties by Oxford University Innovation, the commercialisation vehicle of Oxford University whose role was to exploit intellectual property generated by the University (University) under a licence agreed with Oxford Nanoimaging Limited (the Spin-out) relating to patents that had been granted to the University following research that Mr. Bo Jing had done first as a paid employed intern and then later as a DPhil student. Mr Bo Jing had become CEO of the Spin-out after ending his DPhil.
The Spin-out argued that the University was not entitled to the licence fees because the patents should not have been awarded to the University in the first place. The Spin-out went on to argue that the patents should have been awarded to Mr. Bo Jing because (i) his employment as an intern could not have been expected to lead to a valuable invention and (ii) his DPhil contract, invoked to assert significant claims over intellectual property created during the research, was unenforceable because is was unfair pursuant to the Unfair Terms in Consumer Contracts Regulations 1999 (Unfair Terms Regs). In order to make this latter argument the Spin-out needed to convince the Patent Court that (i) Mr. Jing was a consumer and (ii) that the contract was unfair.
Analysing whether the patents should have been awarded to Mr. Bo Jing, the Patent Court disagreed with the Spin-out in relation to the period of employment; persuaded by the University’s argument that even a “lowly” intern may invent whilst employed in circumstances where the role is in the development of something hitherto non-existent. As an employee, the intellectual property vests in the employer.
Furthermore, the Patent Court rejected the argument that under the Unfair Terms Regs, the DPhil contract was unfair and therefore unenforceable. Whilst the Patent Court agreed that Mr. Jing should be characterised as a consumer whilst a DPhil student, it determined that the DPhil Contract was fair as, without the University’s support, the patent registration would not have been obtained.
Conclusions
- Students doing research and higher degrees under a contract should be considered consumers and therefore the full gamut of consumer rights apply;
- Universities drafting their intellectual property sharing approaches need to ensure these are fair in the circumstances and do not exploit an imbalance of bargaining power;
- Students, especially those performing research, cannot assume they own the intellectual property arising from their studies;; and
- Different universities have different commercial offers and policies relating to income arising from intellectual property rights exploitation and students may wish to consider these as part of their analysis of where to pursue higher study.
Authored by Michelle Rule and Simon Halberstam of the SMB tech law team. If you would like to discuss these topics further or have any questions relating to intellectual property rights, please email simon.halberstam@smb.london