Major judgment on university IP

Just when you thought it was safe to knock off for Christmas, the English High Court publishes a major decision on university IP. Judgment in the case of Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 (Pat) was published at 2 pm on Friday 23 December, around an hour after IP Draughts had turned off his computer for the Christmas break.

It is said that the typical length of a novel is around 80,000 words. The report of this case comes close, at just under 75,000 words. When IP Draughts copied and pasted the BAILII report into a Word document, it took up 167 pages.

Why so long? Well the judge in the case, Daniel Alexander KC (a deputy High Court judge and leading IP barrister), took the trouble to review and discuss the case law on a novel and complex subject: does a university student, at postgraduate or undergraduate level, benefit from consumer protection legislation such that a university’s IP policy is only legally effective if it is “fair”? Some readers will be aware that the UK competition authority has given guidance on this subject in relation to contracts between universities and students, which Daniel mentions in his masterly judgment.

Reading between the lines, it seems that Daniel decided not to rely on the legal submissions that junior counsel for the parties had made to him on this subject, and he did his own research. (Lord Denning, in one of his autobiographies, said that he sometimes did this.) The result is a readable judgment of PhD quality. IP Draughts ran the first 50 paragraphs through the Bla Bla Meter. It scored a creditable 0.21 – not quite up to Robin Jacob standards (a very high standard indeed), but better than many senior judges. If the judicial appointments panel had the imagination to see it, the judgment would serve as an application for instant membership of the Court of Appeal, without going through the tedium of sitting as a full-time High Court judge.

IP Draughts will take time to read the judgment in detail. In summary, it concerns a claim for £700,000 in unpaid patent royalties. The claim was brought by Oxford’s technology transfer company against its licensee, a spin-out company, Oxford Nanoimaging Ltd (ONI). Part of ONI’s defence to the claim was that the IP didn’t belong to Oxford, and instead belonged to one of the founders of ONI, who was also its CEO, a Mr Jing. Mr Jing was a former PhD student at Oxford University. ONI claimed that the terms of Oxford’s IP policy were unfair and unlawful under consumer protection legislation, such that ownership of the relevant IP had not passed to Oxford. A copy of the relevant terms of the IP policy is annexed to the judgment.

Daniel’s conclusions were:

641. The University was properly entitled to claim (and OUI is now entitled to) the all of patent rights licensed under the Licence. The Licence is not void. The parties were not mistaken that ONI was validly licensed and the royalties due should be paid.