Inventors’ dispute over UCD ‘nanobubble’ technology enters Commercial Court
Posted on 27th February 2023 at 22:18
It is claimed that efforts to commercialise invention have been damaged
An inventor of a ground-breaking energy-efficient method of generating nanobubbles claims University College Dublin (UCD) and his fellow inventor have conspired, along with a businessman, to damage his efforts to commercialise the invention.
Prof Niall English of UCD’s School of Chemical Bioprocess Engineering, and a company he set up to commercialise the technology, AquaB Nanobubble Innovations Ltd, are suing UCD itself, co-inventor Mohammed Reza Ghanni, businessman John Favier and Nanobox Ltd, which was also set up to commercialise the invention.
Nanobubble technology is used to oxygenate water, a costly process which many commercial bioprocesses require.
In fish farming, for example, the cost of oxygenation can be the second highest expense after feed while in wastewater treatment processes, oxygenation can represent 60 to 70 per cent of operating costs. The new technology reduces the amount of energy required.
In proceedings admitted to the Commercial Court on Monday, Prof English seeks injunctions restraining UCD from granting a commercialisation licence to the rival Nanobox company. Alternatively, he wants the court to revoke or suspend any licence already granted.
He seeks an injunction restraining the defendants from using commercially sensitive information they gained as well as damages for tortious interference with economic relations.
The claims are denied.
Prof English said in an affidavit that Dr Ghanni was part of his research group on nanobubbles. Dr Ghanni went on to play a notable role in the research and, in recognition of this, he was listed as a co-inventor with Prof English, he said.
AquaB was incorporated as a UCD “spin-out company”, a system whereby the college gets a shareholding with the inventors for any commercialisation of research inventions.
Prof English said a big step towards commercialisation was engagement with the South Korean Hyundai Corporation. In January/February 2021, Dr Favier came on board to come up with a commercialisation plan during which time Dr Favier had access to highly sensitive data and intellectual property, he said.
But, he said, around August 2021, UCD, Dr Ghanni and Dr Favier “conspired to act with the predominant purpose of damaging the economic interests of Prof English and AquaB”.
This included Dr Favier’s failure to produce a business plan and demands for a greater share in AquaB
In the meantime, Prof English says he was taking various steps to further the commercialisation project including discussions with Enterprise Ireland and seeking investment from a company called The Yield Lab Europe Fund 1 GP Ltd.
UCD had not, however, taken any meaningful steps to issue a commercial licence to AquaB, he said. Instead, without his knowledge, UCD engaged with Dr Ghanni and Dr Favier with a view to a commercial licence being granted to a separate company.
Dr Ghanni resigned from AquaB in March 2022 and later left UCD to take up a position in TCD, he said.
Commercialise the technology
Last June, UCD granted a licence to AquaB for the commercialisation of the technology in certain fields related to oil and gas recovery and wastewater treatment. However, it refused to grant AquaB a licence that would have allowed it to fully commercialise the technology, he said.
UCD has resolved to grant the rival Nanobox firm a much broader licence than it has sought and that would constitute about 85 per cent of the worldwide market for the technology, he said.
In an affidavit seeking entry of the case to the Commercial Court, Dr Favier said the allegations are and will be strenuously denied.
He also says the technology was developed on foot of a discovery made by Dr Ghanni and that as “Prof English was the professor overseeing the relevant laboratory at the time, he was entitled to claim part of the invention rights”.
Mr Justice Denis McDonald, who was told the case could be admitted to the Commercial Court on consent between the parties, approved directions for the progress of the case and said it could come back in July.
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