Vanessa Hill v Touchlight Genetics Limited

A claim to patent entitlement depends on when the invention was conceived and on the objective scope of any assignment. The court assesses conception by considering all the evidence in the round, with contemporaneous documents important but not determinative. A contractual assignment of intellectual property relating to projects is not confined to wholly thermophilic processes merely because the projects are described as based on thermophilic bacteria, where the relevant invention is temperature-agnostic and the commercial purpose was to enable development of the projects. Estoppel and restitution issues may be left undecided where the claim fails on independent grounds.

Dr Vanessa Hill claimed joint entitlement to inventions disclosed in patents and applications concerning processes for producing closed linear, or doggybone, DNA. She alleged that the inventions had been conceived before her employment by Touchlight Genetics Limited and that the Service Agreement assigned only rights relating to wholly thermophilic processes.

The defendants disputed the timing of conception, relied on the Service Agreement as assigning the relevant rights, and advanced alternative estoppel, limitation, unjust enrichment and circuity arguments. The principal issues were when the Close-Ended Process and dbDNA Template Process were conceived, and the scope of the contractual assignment.

1. Timing Issue. The claim failed because the Close-Ended Process and dbDNA Template Process were more likely than not conceived in early November 2008, after the Service Agreement took effect. The court assessed the documents and evidence cumulatively. Earlier technical plans, presentations and patent materials described a Cut and Ligate Process, not the direct use of protelomerase on RCA concatemers. The November 2008 notes and slide deck showed a material change and were consistent with conception at that time.
2. The claimant’s account of conception in 2007 and communication to the patent attorneys before September 2008 was not credible. The absence of a direct description of the Close-Ended Process in earlier documents was significant, and the court rejected attempts to derive it from broad or preliminary wording in investor and search documents.
3. Contract Issue. On the assumed basis that the inventions had been conceived and communicated before the Service Agreement, clause 11.2 assigned rights relating to the Projects. The Projects were described at a high level and were not limited to processes operated wholly under thermophilic conditions. The relevant inventions were temperature-agnostic. The assignment therefore covered mesophilic as well as thermophilic operation.
4. The contractual construction was supported by the natural and ordinary meaning of the language, the factual matrix and commercial common sense. The purpose of the assignment was to give Touchlight the rights needed to develop and exploit the Projects, including where a suitable thermophilic protelomerase might not be found.
5. Estoppel and other issues. The court made factual findings relevant to estoppel, including that Dr Hill’s conduct before 2012 conveyed that Touchlight owned the rights. It declined to decide the disputed legal questions or final effect of estoppel because the claim already failed on the Timing Issue and Contract Issue. It likewise declined to determine the limitation, unjust enrichment and circuity arguments where unnecessary.
6. The claim was dismissed. Touchlight’s counterclaim did not arise.