Jurisdiction(s):
United Kingdom

R&D IP ownership: construction of collaboration and service agreements and the pitfalls of conditional assignments - Bionome v Clearwater; Hill v Touchlight (England and Wales)

Published on: 03 March 2025

Published by a LexisNexis IP expert

Legal News

Article summary

It’s in the wording—two recent UK rulings show how collaboration agreements and employment arrangements with people engaged in R&D can unravel

Bionome Technology Ltd v Clearwater [2024] EWHC 3155 (Ch)
Hill v Touchlight Genetics Ltd and other companies [2025] EWHC 107 (Pat)

Key takeaways

The upshot from these disputes is that the Courts of England & Wales will focus on the natural, ordinary meaning of the chosen words—assessed in their full context—when reaching an interpretation. An assignment of IP rights may fail to take effect for a range of reasons: for example, non-compliance with required legal formalities, or a conclusion that—on the proper construction of the instrument—it was not sufficiently explicit that the IP was intended to pass, and therefore ineffective in law. Accordingly, assignment wording must be prepared and reviewed with real care and precision, with drafters keeping potential future disputes firmly in mind to sharpen the context and reduce room for argument. In that respect, it can be appropriate, and sound practice, for employers to insist that individuals or employees active in R&D reveal any relevant inventions they believe they ‘own’ before starting any consultancy or employment from the outset. That should ensure those parties are clear on,...

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