In an interesting case for employers who believe they own IP developed by employees, the University of Western Australia (UWA) has announced it will appeal against a recent decision by Justice French in the Federal Court. UWA had claimed that inventions developed by Dr Gray during his employment with the university were rightly owned by the university.
Justice French determined that UWA did not have any ownership over the inventions of Dr Gray while he was working as a professor at the university.
It is alleged that Dr Gray developed a liver cancer treatment while he was working for the University.
Justice French said, “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 recourses, will ordinarily belong to the academic staff...The position is different if staff have a contractual duty to try to produce inventions. But a duty to research does not carry with it a duty to invent.”
UWA Vice-Chancellor Professor Alan Robson said the University would appeal against the decision because they believed that when research and development is undertaken in a University using public funds, the University should own the intellectual property.
UWA will appeal the decision on the grounds that Justice French made errors of fact and law in relation to the terms implied in the contract of employment between the University and Dr Gray. The University will argue that Dr Gray had fiduciary obligations as a senior employee with respect to the inventions allegedly developed at the University.
"If the decision is correct, then it is doubtful that any University can assume that it has rights in inventions created by employees during their employment," Professor Robson said.
For more information regarding this topic please email Wendy Cunneen on wendyc@wrays.com.au or Cherie Van Wensveen on cheriev@wrays.com.au or call 08 9216 5100.
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