Hill vs Touchlight Genetics Limited & Others

This case concerned a patent entitlement dispute in biotechnology between Dr. Vanessa Hill and Touchlight Genetics Limited and its subsidiaries.

TLDR:

• Dr. Hill claimed joint ownership of patents filed by Touchlight.
• The court had to decide whether to appoint a scientific adviser or allow expert evidence.
• The court ruled in favor of expert evidence due to the complexity of the case.

The claimant, Dr. Vanessa Hill, is a molecular biologist who was a shareholder and former director of Touchlight Genetics Limited. The dispute arose over the entitlement to patents related to synthetic DNA vectors and their enzymatic production.

Dr. Hill claimed that she had made and disclosed the inventions before her employment with Touchlight and that she only assigned part of these inventions under her service agreement. She sought joint ownership of the relevant patents and patent applications.

Touchlight contended that Dr. Hill did not devise or disclose the inventions before her employment and that the service agreement transferred all rights to Touchlight. They also argued that Dr. Hill's claim was barred by statutory limitation periods and estoppel.

The court examined whether to appoint a scientific adviser or order the exchange of expert evidence. Mr. Justice Mellor ruled that expert evidence was necessary due to the technical complexity and potential disputes over the inventive concepts.

The ruling emphasized the importance of expert evidence in patent cases, particularly where technical disputes are likely to arise. The court concluded that appointing a scientific adviser without expert evidence would be unprecedented and inappropriate.

The court granted permission for each party to call one technical expert witness in molecular biology to address the technical aspects of the case and assist in understanding the technology and disclosures in technical documents.

Legal representatives: Hugo Cuddigan KC (instructed by Wiggin Llp LLP) for the Claimant, Adrian Speck KC and James Whyte (instructed by Bristows LLP) for the Defendants.

Judicial Panel: Mr. Justice Mellor

Case Citation Reference: [2024] EWHC 533 (Pat)