Early-stage innovative companies in the energy storage and battery technology sector often collaborate with third parties, whether individuals or companies, to develop and commercialise their inventions.  Two recent cases provide valuable case studies of what can go wrong when collaborators in early stage-companies have not agreed who should own the intellectual property rights arising out of those collaborations.  

By way of a brief introduction, a patent is a type of intellectual property right which can be used to protect technical innovation; enabling the patent owner to stop third parties from using and exploiting the patented invention.  Patented technology is often considered the IP “crown jewels” of any innovative company.   

In the UK, the right to apply for and obtain a patent is governed by the Patents Act 1977 (the “Act”). Under the Act, the first owner of a patentable invention will generally be the inventor (the actual devisor of an invention).  There are some exceptions to this, for example where an invention is made by an employee in the course of their normal duties – in which case, their employer will usually be the first owner of all the invention (and, therefore, the right to apply for and obtain a patent to protect it).    

Can a contract assign IP created before the date of the agreement? 

In the first of our two case studies (Hill v Touchlight Genetics Ltd & Ors [2025] EWHC 107 (Pat)), the core of the dispute related to when an invention was created and when an assignment of IP rights took effect.  

Touchlight Genetics Ltd (TGL) was the applicant for several patent applications related to a process for creating “doggybone” DNA (the Patents).  The other party, Dr Vanessa Hill, was [the] inventor of the inventions described in the Patents.  Dr Hill claimed that she was entitled to own the Patents because she had devised the inventions before she signed a Services Agreement with TGL.  The Services Agreement included an assignment of IP rights. 

The IP assignment clause in the Services Agreement included the following, “… [Dr Hill] assigns to [TGL] with full title guarantee, the entire copyright (including future copyright) and all other rights and interests of whatsoever nature in and to the Intellectual Property Rights…”.  The term “Intellectual Property Rights” included in its definition, “… 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” (emphasis added).  The Court held that, although the description of the Projects in the Services Agreement was high-level, the Patents fell within their scope, and, accordingly, the rights in those Patents had been assigned to TGL.  

An important takeaway point from this decision is that clarity is needed on what IP rights are or, more importantly, are not included in an IP assignment (and that a Services Agreement can indeed include an assignment of IP rights created prior to the start of employment).   

Who owns the IP when the collaboration agreement is unsigned?  

The second case offers a cautionary tale – what can happen when collaborating parties do not finalise and sign a written agreement relating to IP arising out of their collaboration.  In Bionome Technology Limited v John Russell Clearwater [2024] EWHC 3155 (Ch), the High Court considered the status of IP ownership and a related, unsigned, collaboration agreement.  

The story began early in 2019, when three individuals (Mr McCarthy (M), Dr Clearwater (C) and Mr Tindall (T)) came together to develop new weedkilling technology.  At the start of the collaboration, M, C and T commenced work on a draft collaboration agreement which would establish the position on IP ownership (and remuneration) between them.  

The draft collaboration agreement went back and forth between the parties, but whether because it proved too difficult to agree or because it was overtaken by events, the agreement was never signed.  The project continued in the meantime and yielded a potentially valuable invention.  At some point in the development process, the relationship between the collaborators broke down. 

M moved forward and incorporated a new company “Bionome” to commercialise the invention and on 25 March 2020, Bionome filed a UK patent application to protect it.  All three collaborators were named as inventors on the patent application.  

C brought an entitlement action at the UKIPO asserting his right to be named as an owner of the patent on the grounds that he had never assigned his rights in the invention.  M, together with Bionome, claimed (among other things), that the draft collaboration agreement was effective to assign (or at least agreeing to assign) C’s rights in the invention.  

The UKIPO Hearing Officer disagreed with Bionome’s interpretation of the draft collaboration agreement, finding that it: “created an agreement that the IP would remain in the control of the parties – one way or another – and signalled that the parties intended to assign any IP applications to the jointly held entity once it had been established and legal advice had been obtained.  It is entirely clear that the Agreement did not in itself assign [C’s] rights to the jointly held entity. It created an agreed framework for such an assignment to take place in the future.” 

Bionome appealed the decision to the High Court of Justice.  On reviewing the draft collaboration agreement, the Judge, Tom Mitcheson KC (sitting as a Deputy Judge of the High Court), held that the draft agreement “was neither an assignment nor an agreement to assign. There was just too much uncertainty and too many intervening future steps or pre-conditions referred to in the Objectives section which needed to be satisfied before such an assignment could take place.”  

The result of the High Court’s decision was to make the patent co-owned by Bionome and Dr Clearwater.  This is significant because, under English law, without agreement between co-owners, it can be extremely difficult to commercialise a co-owned patent and to realise the parties’ investment in the technology – as the Judge in this case said, “I would therefore urge the parties to seek to resolve their remaining differences without further litigation, if necessary by engaging in ADR. Otherwise, any valuable invention they have made is in danger of withering on the vine.” 

Key takeaway 

These two cases demonstrate the importance of considering IP agreements at an early stage, ensuring that they are drafted to meet the needs of the parties and, importantly, that they are finalised and executed!