University research students: who owns the IP?
Contacts
Of Counsel
UK
I am a British and European patent attorney in our Intellectual Property group in London. I am involved with UK patent infringement actions relating to standard essential patents (SEPs), FRAND setting litigation and globally coordinated litigation, as well as SEP essentiality reviews and valuation. I am also authorised to represent clients before the Unified Patent Court (UPC) that opened in Europe in June 2023.
The English Court has ruled on the ownership of inventions made by a PhD student at a UK university. Under the UK Patents Act 1977, employee’s inventions generally belong to their employers. Is a PhD student an employee or a consumer? If a consumer, is a term in an agreement to assign IP “unfair”, therefore potentially not binding on the student?
In Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 (Pat) (23 December 2022), the Court held that a PhD student is a consumer but the terms of the student’s contract were not unfair.
What’s the issue?
There is debate about who owns and who benefits from intellectual property (IP) rights arising from the research activity of academics and students. This debate has increased in importance as institutions have increased their focus on commercialisation of research work.
The court was asked to decide whether a PhD student was a consumer and therefore entitled to protection under consumer…
