"..[A] duty to research does not carry with it a duty
to invent". These words, handed down in a recent Federal
Court judgement by Justice French, have many Australian
employers (such as universities and other R&D facilities)
now frantically reviewing their contractual arrangements with
staff and IP ownership policies, which may no longer afford
them the legal protection they once assumed.
The case of University of Western Australia v Gray (No.20)
 FCA 498 considered the validity of an employer's
claim to IP developed by one of its employees during the course
of their employment. The case relates to a claim by UWA that
since Dr Bruce Gray had developed cancer-treating technologies
on work time whilst an employee of the university, title in the
derived IP rights was vested in the university. Gray's
counterargument was that he was required by his terms of
appointment to teach students and to conduct research
– not to "invent", per se.
UWA, in turn, asserted that it was an implied term of
Gray's employment contract that IP developed throughout
the course of his employment belonged to UWA. Indeed, there
appears a widespread assumption throughout academia that such
an implied term generally governs research conducted by
academic staff using university facilities. However, the Court
concluded that this assumption is not well founded.
"Absent express agreement to the contrary, rights in
relation to inventions made by academic staff in the course of
research and whether or not they are using university resources
will ordinarily belong to the academic staff," French J
stated in ratio.
The Court further observed that the position would be
different where employees have a contractual duty to attempt to
produce inventions. However, in the view of the Court, a duty
to "research" does not, of itself, carry with it a
duty to "invent". Express provisions in an employment
contract are therefore necessary for an employer to claim
unequivocal ownership of the end product.
Notwithstanding, even if such provisions were to exist in
one's employment contract, this case demonstrates that
the transaction costs of administering and enforcing an
employer's right, allied with uncertainty as to the
scope and application of such rights, begs a real question as
to their utility. Considering the length and complexity of this
litigation (50 days, 517 pages and 1617 paragraphs of
judgement), one can only imagine the scale of a scenario in
which IP rights created by a team of research workers, using
external funding and employing collaborative arrangements over
extended periods of conceptual and practical development, were
UWA is apparently considering appealing the decision, whilst
other employers watch with a vested interest. Whilst largely
consistent with comparative cases in other jurisdictions, the
decision nonetheless imposes pressures on the commercialisation
of Australia's IP that larger economies do not have. If
the judgement holds, it threatens to further complicate
employer/employee relations within academia and provides a
serious threat to the continued funding and provision of
facilities so intrinsic to such research.
Shelston IP has considerable expertise in the drafting and
interpretation of IP clauses within such employment contracts.
We are well placed to advise both employers and employees of
their legal entitlements and manoeuvrability within such
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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