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 Gray1 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.

If you are not familiar with the earlier decision, you can read our article here.

The case is expected to have far reaching consequences in both Australia and New Zealand.

Intellectual property terms of employment contract critical

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 drawn?


1 [2009] FCAFC 116 (3 September 2009)

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