Universities & Commercialisation: Implications of the Oxford Case

About the conference

A landmark decision of the English High Court in December 2022 focussed attention on important issues for the university sector.

The Oxford case was one of the first occasions on which a UK university has taken on a company in major commercial litigation, and won. The dispute was about outstanding royalties under a patent licence agreement. The court ordered the company to pay Oxford outstanding royalties of £700,000, together with Oxford’s legal costs of nearly £1,000,000.

Although it started as a simple debt claim, the way the defendant brought its case raised many other legal and cultural issues. The court made important decisions on themes that had not been litigated in the English courts before, including:

• that an intern was employed to invent, so that his inventions belonged to the university
•  that a PhD student was a consumer, and the university had acted fairly to that consumer (as required by consumer protection law) in relation to its IP, revenue sharing and equity policies
• that a university could take a non-commercial view of spinout opportunities, based on its charitable objectives
• that there was no evidence that Oxford’s policy on equity stakes hindered the formation of spinout companies, contrary to a common investor complaint

The defendants obtained permission to appeal the decision, but the parties settled their dispute before it reached the Court of Appeal. Thus, the decision of the High Court stands.

The conference will explore the implications of this important court decision for how universities operate, and how they interact with academics, students and interns. We will learn from the different perspectives of senior academics, university managers, lawyers working in the sector, regulators, investors and spinout company executives.

Hosted by the Institute of Brand and Innovation Law at University College London, the speakers will include experts from UCL and from other organisations that are involved in knowledge creation, protection and commercialisation, the formation of spinout companies, and the relationships between universities, their academic staff, students and interns.

Confirmed speakers include:

• Hon. Professor Mark Anderson, UCL IBIL / Anderson Law LLP
• Athene Blakeman (Oxford Science Enterprises)
• Professor David Bogle, UCL
• Dr Phil Clare, CEO, Queen Mary Innovation Ltd
• Tomas Coates ‎Ulrichsen, Director, University Commercialisation and Innovation Policy Evidence Unit, University of Cambridge
• Dr Tyler Denmead, Associate Professor, University of Cambridge
• Dr Matt Fisher, UCL Laws/IBIL
• Alice Frost, Director of Knowledge Exchange, Research England
• Mairi Gibbs, Oxford University Innovation
• Colin Hunsley, Director, Inspired Licensing Ltd
• Professor Sir Robin Jacob, UCL IBIL
• Anne Lane, UCL Business
• Dr Lucinda Miller, UCL Laws
• David Palfreyman, Director of the Oxford Centre for Higher Education Policy Studies, and former Office for Students Board Member
• Toby Riley-Smith KC, Henderson Chambers
• Phil Thorpe, Deputy Director, UK Intellectual Property Office
• Maria Toft, Former PhD researcher at the University of Copenhagen, and student rights campaigner
• Dr Jonathan Soderstrom, Chief Licensing Advisor, Wilsom, Sonsini, Goodrich and Rosati, New York
• Greg Wade, Head of Innovation Policy, Universities UK
•  Kathryn Walsh (UCL Innovation & Enterprise)

View the recordings on our Vimeo site

Programme

09:30 Opening session
Welcome and Introduction to conference
Professor Sir Robin Jacob

Reminder of key themes from the Oxford case
Hon. Professor Mark Anderson

09:55 Typical duties/roles of academics, students and interns in research projects; comparison with ownership rules under s.39, Patents Act 1977
Dr Matt Fisher, UCL IBIL
Phil Thorpe, Deputy Director, UK Intellectual Property Office
Kathryn Walsh (UCL Innovation & Enterprise)

10:35 Consumer protection laws and fairness to consumers: do the rules apply to universities and their students?
Lucinda Miller, UCL Laws
Toby Riley-Smith KC, Henderson Chambers
David Palfreyman, Director of the Oxford Centre for Higher Education Policy Studies, and former Office for Students Board Member

11:15 Coffee break

11:45 Applying consumer protection laws: behaving fairly to interns, undergraduates and PhD students in relation to IP and spinout issues
Professor David Bogle, UCL
Dr Tyler Denmead, Associate Professor, University of Cambridge
Dr Christina Turner, former DPhil student, University of Oxford, and trainee solicitor at Anderson Law LLP

12:30 Lunch

13:30 University IP: ownership and revenue sharing policies - a need to evolve?
Dr Phil Clare, CEO Queen Mary Innovation Ltd
Alice Frost, Director of Knowledge Exchange, Research England
Greg Wade, Head of Innovation Policy, Universities UK

14:15 University shareholdings in spinouts: benefit or hindrance to the public good?
Anne Lane, UCL Business
Tomas Coates ‎Ulrichsen, Director, University Commercialisation and Innovation Policy Evidence Unit, University of Cambridge
Athene Blakeman (Oxford Science Enterprises)

15:00 Tea break

15:30 Should universities engage in commercial litigation, including contract and IP infringement cases?
Angela Fouracre, Partner, Bristows LLP
Mairi Gibbs, Oxford University Innovation
Dr Jonathan Soderstrom, Chief Licensing Advisor, Wilsom, Sonsini, Goodrich and Rosati, New York
Colin Hunsley, Director at Inspired Licensing Ltd

16:15 Finish