In general, an employer is taken to own any intellectual
property (IP) that is created by an employee in
the course of their employment. The recent case of Courier Pete
Pty Ltd v Metroll Queensland Pty Ltd  FCA 735 highlights
the importance of ensuring that this is clearly stated in the
As will be seen, the fact that an employee works at a water tank
manufacturing factory and creates new designs for water tanks does
not automatically assign the IP rights to the employer. The
question of who owns the IP comes down to what the employee was
employed to do, or whether they were ever specifically asked to
invent or create new designs during the course of their
One man's job, horse, hose, and idea
Mr Mark Collymore was a factory foreman at the Metroll
Queensland factory, which manufactures and supplies metal building
products, such as fencing, roofing and rain water tanks.
During his period of employment, and while watching his horse
play with a hose in a water trough on his property, Mr Collymore
came up with the idea of modular water tanks which could be
connected together to increase water storage capacity. Mr Collymore
applied for registered design in his own name for the first tank
design, and in the name of his company, Courier Pete Pty Ltd, for
the other two tank designs.
A dispute then arose between Metroll and Mr Collymore over the
ownership of the designs. Had he created these designs in the
course of employment with Metroll (under section 13(b) of the
Designs Act 2003), or outside the scope of his employment?
"In the course of employment"?
In considering this issue the judge stated that it was necessary
to ask "what was the employee employed to do?". The judge
summarised the relevant considerations:
"If the employee was
employed to make or discover inventions of the type ultimately
produced [by the company], then that is work for which the employer
had paid and the employer is entitled to the benefit of the
invention. If the employee does not have any general duty to
invent... then the only basis upon which an invention can be said
to have been created "in the course of employment" is if
it had been created pursuant to a specific direction by the
employee to undertake work which results in the creation of the
Therefore, if Mr Collymore's contract required him to create
new tank designs, then the design rights would vest in Metroll.
However, in this case it was common ground that Mr Collymore's
employment contract was of a very general nature and did not define
the scope of his employment with any precision. For example, it did
not say that his duties included creating inventions or new
designs, nor did it address the issue of ownership of new
What was the evidence?
Despite the fact that the contract was silent on the matter,
Metroll argued that Mr Collymore's duties included creating new
tank designs and thathe had been specifically instructed to create
new water tank designs.
Metroll had one witness who was part of the "tank-making
team", of which Mr Collymore was said to be a part, and who
claimed to have been given instructions to create new tank designs.
However, this evidence was not corroborated by anyone else who was
said to be part of the team, which the judge inferred meant that
the witnesses had nothing helpful to add to Metroll's case.
Moreover, it transpired that the witness' ordinary work meant
that he was away from the day-to-day activities of the tank making
team. Consequently the judge gave little weight to this evidence as
it was unlikely that, given these circumstances, he would have been
personally aware of what instructions or directions might have been
In the face of this weak evidence from Metroll, Mr Collymore
gave compelling evidence that he created the tank designs at home
and in his own time. The judge also accepted his evidence that he
had told Metroll that he owned the designs and that he proposed to
charge Metroll a royalty fee for the use of his modular tank
designs. Healso found it significant that any work that was done at
Metroll on modular water tanks occurred after Mr Collymore had
applied to register the first design.
Points to note
On the evidence, the judge was satisfied that Mr Collymore had
designed the tanks in his own time and not in the course of his
employment. He found in favour of Mr Collymore and his company,
Courier Pete Pty Ltd.
This case illustrates the importance of making the scope of an
employee's duties very clear. On the one hand, if an
employee's duties are to include creating IP rights, then it is
essential that the written employment contract states that the
employee's duties include invention and creativity, and,
importantly that all resulting IP rights will be owned by the
Likewise, if the employer wants the employee to own any IP
rights, especially if developed outside working hours and
separately from the employment, then it is advisable to state this
in the employment contract, or to have this understanding clearly
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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