Who owns university derived intellectual property?

Working with many universities the question of 'who owns university derived intellectual property' or variations of this question comes up frequently and so we thought it worthy of discussion. 

What seems like a simple question is fraught with complexity. Firstly, it is important to note that rules surrounding inventions and how they are owned, varies from country to country and so there is no single answer to this question. It is sometimes determined with reference to employment law of a particular country, or alternatively by IP legislation. Also, it can depend on the nature of how the IP was developed and who developed it. 

Nevertheless, in spite of the complexities, we will take a look at some of the legislation in the UK and relevant court cases that have sought to interpret this. 

In the UK (and hence applicable in England, Scotland, Wales and Northern Ireland), section 39 of the UK patents Act 1977, states that an invention made by an employee shall belong to their employer if “it was made in the course of the normal duties of the employee”, or if the “duties falling outside” their normal duties, but “specifically assigned” to the employee. In both situations, it is necessary “that an invention might reasonably be expected to result from the carrying out of” their duties. Additionally, an invention will be owned by the employee’s employer if the invention was made in the course of duties and the employee “had a special obligation to further the interests of the employer’s undertaking”.  

It may be relatively easy to appreciate that an academic researcher is employed to invent, as their “normal duties” would be considered as carrying out research that might lead to an invention. Equally, it could be expected that, for example, an administrator at a university is not generally employed to invent, unless a specific research task was assigned to them and hence any invention they develop would not expect to be owned by their university. However, what about a lecturer or Professor who are not employed to carry out research, but rather simply to teach. This becomes a grey area, but a more senior lecturer or Professor could be argued as having a “special obligation to further the interests” of their university and so any invention “might” be owned by the University as employer. We say “might,” as it may come down to the particular set of circumstances and so it is not possible within this article to provide clear advice, without knowing the specific facts of a situation.  

However, what constitutes “normal duties”? What if a researcher conducts work at home, using their own equipment and outside of normal working hours. A similar scenario was considered in Prosyscor Limited v. Netsweeper Inc and Others [2019] ECHW 1302 (IPEC). The judge considered the contract of employment of Mr Kite, employee of Netsweeper and came to the conclusion that creating the software in connection with the case “fell squarely within the normal duties” of his employment. Moreover, the judge found that the acts carried out by Mr Kite were part of his normal duties and do not cease to be because they were carried out at home and outside office hours. If the employment contract had specified that Mr Kite is not expected to work outside normal office hours and away from the office, the decision might be different. Thus, for a university researcher, it is important to consider what constitutes their “normal duties”, ideally in consultation with what is said in their contract of employment.  

What about students at a university? It is generally understood that students own any IP they create while at university, but again this can turn on the facts of a particular situation. For example, students can sometimes be a member of university staff, in which case their employment contract, as well as the discussion above, may come into play. Also, a student may be funded by an external organisation and the funding agreement may discuss IP ownership. Students may jointly develop the IP with university employees and/or use university equipment and this can have a bearing on IP ownership. Students may also be invited by their university to assign any IP they create, in return for being treated in the same or similar way as university staff members – this may include payment of IP protection costs and/or being eligible for any future revenue distribution. However, in the eyes of the law, the student must be treated fairly and understand what any assignation of their rights entails. 

In a fairly recent court case (Oxford University Innovation Ltd v Oxford Nanoimaging Ltd [2022] EWHC 3200 ), the English High Court considered ownership of an invention developed by a PhD student at Oxford University. In what was a first, an argument was put forward that a PhD student should be considered as a consumer and that under consumer protection legislation, a term in an agreement to assign their IP was unfair and should not be considered binding on the student. In a lengthy decision, the judge found that a PhD student can be considered as a consumer and hence treated in accordance with the prevailing consumer protection legislation. However, in the circumstances of the case, it was held that the IP ownership terms in the student’s PhD contract were not unfair. It is important to note that Oxford University had recently changed the terms of their PhD student contracts following earlier discussions with students and this was found to reduce any imbalance between university employee’s rights and those of PhD students. Thus, the judge found that IP provisions within the PhD student’s contract did not create a significant imbalance to the detriment of the student and hence were not deemed to be unfair and were made in good faith by the university.  

The above decision points to the importance IP clauses in a student’s contract being fair and not being unfavourable as compared to university employees.  

We trust that the foregoing discussion will help inform and guide our readers, but should you have any questions or queries around university IP ownership, please feel free to reach out to us and will be happy to consider and advise you further.