Entitlement to Inventions: Timing and Construction in Hill v Touchlight

Drafting and negotiating IP clauses in agreements is often a laboured and contentious process, but a necessary one. Difficult conversations may have to be had but achieving clarity early on reduces the risk of a dispute down the line. Whether there will be a dispute of course depends on the relationship between the parties and the circumstances surrounding the development of the IP rights, but tension that ultimately leads to breakdown in relationships is not uncommon, especially for early-stage tech companies and start-ups, often ending up in a dispute situation. 

This was illustrated in the case of Hill v Touchlight [2025] EWHC 107 (Pat) in which the UK High Court found that Dr Hill’s inventions relating to synthetic DNA vectors and production processes were owned by Touchlight Genetics Limited (“TGL”), dismissing Dr Hill’s claim for joint ownership. 

Background

Dr Hill was a post-doctoral researcher at Royal Holloway University London (“RHUL”) from November 1998 until April 2006. Her work at RHUL formed the basis of ideas that are relevant to the inventions claimed by the patents in this case. From April 2006 to July 2007, Dr Hill held an honorary position at RHUL, which allowed her to publish her work with an academic address.

On 8 November 2007, TGL, the First Defendant, was incorporated, to which Dr Hill held 49% of the shares. Mr Ohlson was a businessman who helped secure investment for the incorporation of TGL and Dr Porter who was a consultant proposed by Dr Hill to assess her ideas. They were both directors of TGL. Dr Hill signed a Service Agreement with TGL, setting out her employment by TGL as its Chief Scientific Officer. The Service Agreement came into effect in early September 2008.

In the meantime, since May 2008, a draft patent application for the inventions was being prepared by a patent attorney firm. The priority application (and another application) was filed on 30 January 2009, disclosing and claiming the Close-Ended Process and the dbDNA Template Process without limitation to operation under thermophilic conditions. The PCT application was filed on 1 February 2010.

The relationship between Dr Hill, Mr Ohlson and Dr Porter had been strained for a while. Dr Hill resigned from TGL on 9 March 2009, her employment formally terminated on 20 August 2009 and her directorship ended on 9 November 2009.

In early 2012, Dr Hill alleged her entitlement to the inventions in the PCT application, issuing proceedings against TGL and two other related companies (together, “Touchlight”).  Although Dr. Hill acknowledged assigning some rights to TGL under her Service Agreement, she argued that the assignment only covered processes operating under fully thermophilic conditions. Dr. Hill claimed that TGL infringed her IP rights by using the processes under mesophilic conditions and licensing them to third parties. 

TGL denied infringement, asserting that the IP rights were fully assigned to them under the Service Agreement. The case primarily centred around the timing of Dr Hill’s invention and the scope of the IP rights assignment. 

Key issues and findings 

Timing 

The central issue was whether Dr Hill conceived the inventions before or after she entered into the Service Agreement with TGL in 2008. Dr Hill contended that she conceived the Close-Ended Process and the dbDNA Template Process in March or April 2007, i.e. before the Service Agreement, referring to papers she read that led to her “eureka moment”, and that only some of her rights in the inventions were assigned to TGL. 

Taking into account all the evidence, Deputy Judge Michael Tappin KC concluded that there was “no credible evidence” to support Dr Hill’s pleaded case that she conceived of the inventions in March or April 2007, before the Service Agreement took effect in early September 2008. Specifically, the judge highlighted that “Neither the Technical Plan… nor indeed any of the iterations of the extended Technical Plan sent in late December 2007 and early January 2008 describe or show the Close-Ended Process.” Additionally, the PowerPoint presentation to investors in May 2008 did not clearly indicate Dr Hill’s involvement with the processes in question, nor did the invention appear in the draft patent application circulated in early September 2008, which was considered strong evidence against Dr Hill’s claims.

As such, the Judge found it more likely that the inventions were conceived after the commencement of Dr Hill’s employment in 2008, specifically in November 2008.

Contract construction 

Although it was not strictly necessary for the Judge to address the contract issue, as he found it likely that the inventions were conceived after entry into the Service Agreement, he had formed a clear view about it. 

Clause 11.2 of the Service Agreement provides that Dr Hill assigned to TGL, "all other rights and interests of whatsoever nature in and to the Intellectual Property Rights and any products of the Employment” where Intellectual Property Rights is defined as including “all such rights, applications, copyright, know-how and confidential information relating to the Projects owned or created by or in the knowledge of [Dr Hill] prior to the commencement of the Employment”.

Dr Hill argued that the scope of the assignment is limited to Close-Ended Process and/or the dbDNA Template Process operated wholly under thermophilic conditions because “Projects” is defined as “the projects based on the use of thermophilic bacteria described in the Information Memorandum”.

The Judge concluded that the natural and ordinary meaning of clause 11.2 did not itself limit the assignment to rights in process conducted under wholly thermophilic conditions, but to rights “relating to” the projects based on the use of thermophilic bacteria described in the Information Memorandum. The Judge concluded that the Information Memorandum described the projects at a high-level without limiting them to use of processes conducted under wholly thermophilic conditions.

Dr Hill relied on other clauses the Service Agreement, which permitted her to continue to be involved in academic research, outside the course of her Employment, such that she would own the rights to that research. However, the Judge did not see how this would assist Dr Hill, as based on the natural and ordinary meaning of the assignment clause, the assignment of rights relating to the Projects was not limited to processes carried out under wholly thermophilic conditions.

As a result, even if the court had found in favour of Dr Hill on the timing issue, the terms of the Service Agreement would still have amounted to a full assignment of the IP rights to the Close-Ended Process and the dbDNA Template Process (without limitation as to the thermophilic conditions) to TGL. 

Estoppel 

Although not necessary for the resolution of the case, both parties raised the issue of whether estoppel could prevent Dr Hill from claiming any rights to the inventions. The Judge made findings of fact so that if the case goes further and it becomes necessary to resolve the issue of estoppel, the Court of Appeal can apply the law on the facts he found. For example, the Judge found that Dr Hill was sufficiently aware of the contents of the 5 September 2008 draft patent application and that at the meeting on 27 October 2008, it was explained that the patent application was not limited to processes carried out wholly under thermophilic conditions. The Judge did not address the law in detail nor try to resolve the disputes on the law. 

Key takeaways 

This case highlights the importance of: 

• Keeping contemporaneous documentary evidence to help establish the timing of the development or conception of an invention - it would be prudent for an individual to keep a detailed contemporaneous record of their research, and it would be advisable for Research and Collaboration Agreements to include provisions for record-keeping obligations and audit rights.
• Well-thought-out and clear drafting in contracts, without relying on implied terms – remember that general contract interpretation principles apply to IP clauses.