IP Rights of Research Students at UK Universities

• Date: 01 September 2023
• Author: Sophie Vo and Juliet Hibbert

Published in Landslide, Volume 16, Number 1, 2023. © 2023 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion

thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the

American Bar Association.

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IP Rights of

Research Students at

UK Universities

Sophie Vo and Juliet Hibbert

The right to be granted a patent in the United Kingdom ordi-

narily vests in the inventor or inventors of an invention.

However, unlike in the United States, a statute provides that

this presumption is overridden in a few situations, notably in

relation to (1) employee inventions and (2) where the right is

transferred to a third party.

For universities, difculty can arise in determining whether

consultants, academics, visitors, students, and secondees are

employees of the university for the purposes of relying on owner-

ship of an employee invention. This requires looking to any

agreement between the inventor and the university that would

be indicative of an employment contract. Even if an employment

relationship could be established, the scope of the employee’s

duties and whether an invention can be expected to result from

those duties must be assessed to ascertain whether the criteria are

met for the employer to be entitled to its employee’s invention.

To the extent the inventor is not an employee of the university,

the university could still rely on its agreement with the inventor

to evidence a legal or benecial right to the invention, such as

through an express or implied assignment.

An interesting decision in the area of patent ownership occurred

at the end of 2022 in Oxford University Innovation Ltd. v. Oxford

Nanoimaging Ltd.,

1

a case concerning the patent rights in an

Oxford University PhD student’s invention. The student, Bo Jing,

was employed by the university as an intern before commencing

his PhD studies. He created inventions during his employment

as well as his studies. As Jing’s relationship with the university

changed during the course of his inventorship, this case engaged

with both of the situations mentioned above where ownership of

Sophie Vo is an associate in the Intellectual Property Group

at Bird & Bird in London, with a particular focus on the life

sciences and health-care sectors. Her experience consists

of contentious, advisory, and commercial work, including in

patent litigation and life sciences transactions and regulations.

She can be reached at sophie.vo@twobirds.com. Juliet

Hibbert is a British and European patent attorney in the

Intellectual Property Group at Bird & Bird in London. Her

extensive knowledge of obtaining and defending patents,

with a particular focus on mobile telecommunications and

health-care patents, helps her guide clients in relation to

litigation and licensing. She specializes in standards-related

patents. She can be reached at juliet.hibbert@twobirds.com.