POSTED BY:
Shona Foster
ON:
4 Sep 2009The long awaited decision of the Full Federal Court in the University of Western Australia v Gray* was released in Sydney yesterday, with the Full Federal Court upholding the controversial decision of the Federal Court.
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.
If you are not familiar with the earlier decision, you can read
our article here:
http://www.jaws.co.nz/media/who-owns-an-invention-developed-by-an-employee.
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.
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?
*[2009] FCAFC 116 (3 September 2009)