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Here are the latest updates for edwardlorilla2134.tower@blogger.com "NIPC Inventors Club" - 1 new article
Student Inventors and their Universities - Ownership of IP in Inventions resulting from Students' Research
Traditionally universities have been funded by grants from central government, fees and gifts from alumni and philanthropic members of the public. These are the so-called first and second funding schemes. More recently universities have been encouraged to exploit their accumulations of knowledge and expertise through licensing, consultancy and training. That is often referred to as "the third stream" of funding. In order to tap that income stream, universities have had to own the right to exploit those resources. That is to say, the intellectual property in research carried out by their staff and students. The right to apply for patents for inventions resulting from research carried out by their staff will usually be covered by s.39 of the Patents Act 1977. That section will not apply to research carried out by students in the course of their studies. Unlike academics who are paid to teach and carry out research, most students pay their a lot of money for their tuition and research facilities. Universities address that problem by requiring their students to assign their rights to apply for patents and other intellectual property rights arising resulting from their research to them in certain. circumstances. An example is section 5 of Statute XVI of the University of Oxford's Statutes: "5. (1) The University claims ownership of all intellectual property specified in section 6 of this statute which is devised, made, or created: (b) by student members only in the circumstances specified in sub-section (3) below;" Subsection (3) provides: "The University does not claim ownership of any intellectual property which is devised, made, or created by University student members, unless that intellectual property was devised, made or created: This section is incorporated by reference into offers to work on a doctorate at Oxford. Just before Christmas. Mr Daniel Alexander KC, sitting as a deputy judge of the High Court, handed down judgment in Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 (Pat) (23 Dec 2022). It is a very long and complex decision consisting of 174 pages in the printable version. I have written an article about the case entitled Patents: Oxford University Innovation Ltd v Oxford Nanoimaging Ltd which appeared in NIPC Law on 23 Jan 2023. The main point of that case is that the provisions requiring students' intellectual property rights to vest in the University of Oxford were challenged by a company that had been set up by one of the university's research students. The company argued that the student had been a "consumer" within the meaning of reg 3 (1) of The Unfair Terms in Consumer Contracts Regulations 1999 ("UTCCR"). He contended that the provision vesting in the University his right to apply for patents arising from his research was unfair. The challenge failed but the deputy judge held that the student was indeed a consumer, the UTCCR applied to contracts between students and their universities and there were aspects of the student's contract with Oxford that created an imbalance that was detrimental to him. The only reason why the challenge failed is that the detrimental aspects of the contract were outweighed by benefits to the student. The University paid for the application for a patent. It had helped to develop the invention. Its technology transfer company had invested in his company. The University paid the student a share of the royalties that it received from its licensees. To avoid such challenges, universities throughout the United Kingdom should review their IP policies and if necessary amend them. They should also pay regard to some of their other contracts. If a research student is a "consumer" then a fortiori so is an undergraduate. Universities should consider their other contracts for tuition, board and lodging, parking on campus and so on as well as their contracts with their graduate students.     More Recent Articles
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