Ownership of employee inventions in Australian universities was
clarified in the long awaited decision of the Full Federal Court in
the University of Western Australia v Gray* which was recently
released in Sydney. The Full Federal Court upheld the controversial
decision of the Federal Court, that Dr Gray's invention was not
owned by the University because he was under no duty to invent.
The case is expected to have far reaching consequences in both
Australia and New Zealand.
Intellectual property terms of employment contract
The decision sends a clear signal that employers need to pay
particular attention to employment contracts and staff policies if
they want to be sure they will own the intellectual property rights
in inventions created by their employees.
The lesson is that the Courts are reluctant to take intellectual
property rights from an individual (i.e. the employee) unless there
is evidence of an agreement to that effect. That agreement may be
implied if the intellectual property is created in the course of
the employee's duty, or it may be specifically addressed as
part of the employment contract. As a result, employers need to
look at their employment contracts and policies carefully and apply
due process when instigating policies.
Duty to research versus duty to invent
But the really interesting issue is whether, in today's
research environment, a university researcher who is employed to do
research may have a "duty to invent". Dr Gray's
research was conducted some years ago, and the court found that he
had considerable freedom as to where he directed his research
effort and had no duty to direct his mind to invention. Could the
same be said of all university researchers today, particularly
those employed to do applied research? There is an argument that
because applied research is directed at that which is not only
novel and non-obvious but also useful, then that research is, by
definition, directed at invention. Where should the line be
* FCAFC 116 (3 September 2009)
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