Wednesday 11 November 2009
Award winning scientist, Professor Veronica James, wins ‘David and
Goliath’ appeal against listed biotech company, Fermiscan
Fermiscan today lost its appeal against an earlier decision made by the Supreme Court of New South Wales in
Professor James' favour.
Professor Veronica James is the applicant for patent in relation to a diagnostic test for various cancers and other
disease, by interpreting diffraction patterns of nails and skin samples.
Fermiscan brought the action in the Supreme Court against Prof James claiming this new test using finger nails and
skin was an improvement of Dr James' earlier invention of a diagnostic test of using x-ray diffraction of hair to detect
breast cancer. This invention was assigned to Fermiscan by Professor James in 2004, as were any "improvements"
to the invention.
It also claimed that Professor James had made disparaging statements of it in a draft scientific paper, her patent
application and a letter to the editor of the International Journal of Cancer, by stating that their were problems with
reproducibility of the Fermiscan tests, and that the skin and nail diagnostic tests may overcome the problems with the
Fermiscan test .
Justice McDougall had previously dismissed the Fermiscan claim that Prof James' new invention was merely “an
improvement” on the earlier hair test, and held that Professor James had not disparaged the plaintiffs.
Today the Court of Appeal, Justices James Allsop, David Ipp and Ken Handley upheld Justice McDougall's decision
and dismissed Fermiscan's appeal.
Middletons Intellectual Property Partner, Jane Owen who represented Professor James said, “Professor James is a
highly respected scientist and the leading Australian expert in use of fibre diffraction analysis of biological materials,
and today’s result is vindication of her own accomplishments and her right to continue researching in her highly
specialised field. Having parted ways with Fermiscan in 2006, Professor James took her research in a different
direction, developing a revolutionary new way to test for a variety of cancers through examination of skin and nail
samples. The judgement also enshrines a freedom of "legitimate expression of scientific views in an appropriate
scientific context" without fear of recourse from companies how make take offence at the views. This is clearly
important for the advance of science - to stimulate a climate where improvements on current science can be
publicised with fear of reproach."
Ms Owen highlighted the significance of the case by saying “scientists need to be aware of the ambit of the IP rights
they assign, and the scope of improvements which are ordinarily encompassed under the assignment. If the
improvement clause is overreaching, or drafted unclearly, this can lead to a dispute about the ownership of later
developed technology. It is clear that these clauses should be drafted to ensure that the scientist can continue to
research in their field of speciality, even if the commercialising company and the scientist part ways.”
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Further information
Jeremy Hyman
Media and Communications Manager
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E: jeremy.hyman@middletons.com
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