Oxford University startup ordered to pay royalties
‘Rare’ case included ‘campaigning element’ says judge | Ex-student sought clarification on royalties from university | 651-paragraph ruling required Oxford Uni to justify its IP policies.
The High Court of England and Wales has ordered Oxford University spinout Oxford Nanoimaging (ONI) to pay £700,000 ($841,000) in royalties amid a dispute over a specialised microscope Nanoimager.
The ruling—issued on December 23—found that the university’s technology transfer arm Oxford University Innovation (OUI) was owed royalties by ONI under a 2016 licence agreement.
OUI is the registered proprietor of patents relating to Nanoimager, a microscope capable of visualising, tracking and imaging individual molecules in living cells with 20-nanometre resolution. ONI was spun out of the university to commercialise the Nanoimager under the licence.
OUI claimed it was owed royalties, amounting to £700,000 in spring 2021 and increasing since then. However, ONI challenged the tech transfer arm’s entitlement to the patents.
Early prototypes of the Nanoimager were made in the condensed matter physics laboratory of Professor Achilles Kapanidis, an Oxford professor.
However, the bulk of the detailed development work which resulted specifically in the patents at issue was undertaken by Bo Jing, who was initially a research intern and later a DPhil student at Oxford University. When the technology was spun out, Jing became the chief technology officer and is now the CEO of ONI, having left the university.
“The thrust of ONI’s case is that Oxford’s approach to allocation of the commercial fruits of such research was unfair to DPhil students and, more particularly, unfair to Jing in the circumstances of the case,” said Daniel Alexander KC in his judgment.
He added: “More specifically it is said that Oxford’s policies are unfairly weighted in favour of the university and senior academics, who may have contributed less to the detail of the work than more junior researchers or inventors.”
Alexander noted that cases of this kind involving these kinds of issues in universities rarely come before the courts and that there is a “‘campaigning’ element to ONI’s case which is said to be directed at improving the position of entrepreneurs, particularly at Oxford”.
Case should have been resolved ‘without court intervention’
In a 651-paragraph ruling, the court concluded that Oxford University was properly entitled to claim (and OUI is now entitled to) all of the patent rights licensed under the licence and that the royalties should be paid.
Alexander, in concluding remarks, said: “Finally, while the court respects the tenacity of Jing and his taking up the cause of student entrepreneurs at Oxford, requiring the university to justify its position, in my view, this case should have been resolved without the need for court intervention and it would not, in my view, be appropriate to devote significant further resources to it now.”
He added that the claim has required Oxford University to justify its IP policies, “which is of some benefit in itself”.
Now, ONI has been ordered to pay £700,000 in royalties on account of the outstanding monies due under the licence agreement, with any dispute as to the balance (including interest) to be settled at a Form of Order hearing, which is due to take place later this month.
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