4 September 2009
Academics win freedom to own their inventions in landmark Federal
Court ruling
The long awaited decision of the Full Federal Court of Australia in University of Western Australia v Gray was handed
down yesterday. The decision dismissed the University's claim that it owned a number of liver cancer treatment
inventions, in the field of targeted microsphere technology.
Middletons’ Intellectual Property Partner, Jane Owen said “The Court's judgement is a strong declaration of a general
principle of academic freedom to research and to own IP in the research free of any entitlement of the University".
The principle ground of the University's claim was that the law should imply into Dr Gray's contract of employment that
the University owns the Microsphere patents, on a general principle that an invention developed by an employee as a
result of research carried out by that employee in the course of employment belongs to the employer - so that the
employee is a trustee of the invention for the employer. The University submitted that this type of term should be
implied into any employment contract where the employee is engaged to solve technical problems, improve the
employer's technology or undertake research.
According to Ms Owen “The University’s attempts to appropriate property to the University was not done
constitutionally by regulations imposed by the University. Because of this, no terms of these regulations purporting to
stake the University's claim to ownership was incorporated into staff contracts.”
The Federal Courts ruling was based on the following principles:
-
Dr Gray did not have any duty to invent under his contract. A duty to research and stimulate research was
not tantamount to a duty to invent. This was notwithstanding that the research carried with it the possibility of
inventions capable of patent protection
-
Dr Gray had complete freedom to publish his research outcomes, regardless of the possibility that
publication could destroy patentability of the inventions
-
Dr Gray and his researchers were expected to solicit independent research funding, and they did with the
devotion of great time and effort
-
the collaborative nature of the research, involving external organisations and researchers, told against any
agreed exclusive appropriation of the fruits of the research to one institution only.
The implications of this landmark case according to Ms Owen are as follows:
-
“Most universities in Australia have comprehensive IP policies which are the measured and fair. However,
the decision flags the potential that claims could be made to challenge policies which are not fair and
reasonable and can be considered as appropriation of property.”
-
“The typecasting of academics who invent as a special class of employee could be
extended to other
research institutions, especially those funded by the public purse. Freedoms on publication and collaboration
are key indicators of this potential.”
-“Third parties engaging in collaborative research with university academics and other public institutions
should conduct due diligence to ensure that clear title to research outcomes can be achieved and seek
appropriate warranties to cover this type of situation.”
About Middletons
In the modern commercial world, standing still is not an option. Middletons is a full service Australian commercial law
firm.
Our clients are serviced by over 500 employees, including 300 legal advisers, from our offices in Melbourne, Perth
and Sydney.
We have extensive experience acting for industry leaders, major corporations and government on groundbreaking
legal transactions in Australia and internationally. Our commercial expertise and knowledge in specific industries
ensures we add value to our clients’ businesses.
The Middletons’ approach is refreshingly different. We don't confuse clients with lots of legal speak – we are straight
talking.
Further information
Jeremy Hyman
Media and Communications Manager
T: +612 9513 2451
F: +612 9513 2399
M: +614 49 953 890
E: jeremy.hyman@middletons.com
NEWS 
