Duty to invent? IP implications for universities

IPRoo - Australian IP News: University of Western Australia v Gray (No 20) [2008] FCA 498

http://www.austlii.edu.au/cgi-bin/sinodisp/au/cases/cth/federal_ct/2008/498.html?query=title(University%20of%20Western%20Australia%20%20and%20%20Gray)

In a lengthy decision of the Federal Court (1619 pars), Justice French dismissed UWA’s claims to patents and other intellectual property created by Dr Gray. The case turned on the differences between a lecturer’s duty to research and the duty to invent. At paragraph [158], his Honour noted:

“After conducting a review of the position in the United Kingdom, Australia and the United States, Monotti and Ricketson observed in Universities and Intellectual Property (Oxford University Press, 2003) that it is not always clear, in any of these countries, that an academic who is employed to teach, conduct research and perform administrative duties is “employed to invent” (at 5.64).”

After extensive review of comparative laws, his Honour stated at [164]:

“While each case involving a university and its academic staff must be assessed by reference to its particular circumstances and the terms and conditions of employment of its staff, I do not consider as a general proposition that there is a presumption at law that the university will be entitled to the rights to inventions developed by such staff in the course of their research.”


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