Friday 4 September 2009

UWA vs Gray Result - Employees & IP - Who owns the IP?

The Full Federal Court of Australia upheld last week the primary decision of the Federal Court in the case of University of Western Australia -v- Gray, and dismissed the appeal by the university, finding that there is no "duty to invent" existing or implied in an employment contract of a University researcher (absent an express provision).

This decision concerned the ownership of intellectual property developed by a researcher at a university (although it has broader implications). Prof Gray’s company successfully marketed and sold an innovative means of treating liver cancer that UWA claimed had been invented while Prof. Gray was a researcher at the university. The Full Federal Court held, among other things, that a university researcher is not employed with a 'duty to invent'. Therefore, the duty to research (if it exists), is not sufficient in itself to make an employment relationship such that the employer (the university) has a right to ownership of intellectual property developed.  Along with the fact that a university researcher is rarely fully-funded by the university (and has to raise research funds separately), the Court confirmed that the intellectual property developed by Professor Gray at the University of Western Australia was owned by Professor Gray; and the Court found that the employment contract and related arrangements were insufficient, in this case, to displace Prof Gray's ownership rights under the Patent Act. It was also held that in the particular circumstances of this case, the existence of a provision in the University's Regulations dealing with patent ownership by the University did not apply as the University had failed to maintain the processes referred to in the Regulation upon which such a provision relied.

This decision has implications for all common law jurisdictions. It appears that the university may appeal to the final court of appeal in Australia , the High Court of Australia. 

AIC Chief Executive Dr. Rowan Gilmore said that ‘although going forward, research organisations would presumably include a “duty to invent” in employment contracts, the judgement created a “hole” in prior disclosures, unless the researcher had formally assigned the IP to the university for commercialisation. The impact on the research commercialisation sector would be unfavourable, as uncertainty around IP ownership would undoubtedly scare away venture capital.’

Dr Gilmore also noted that the AIC offered as part of its suite of services formal commercialisation frameworks and support systems that could help a university to “maintain the processes referred to in its regulations dealing with patent ownership by the University”. 

Contributed from articles by Alan Collier, LESANZ, and the Australian Institute for Commercialisation

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