Member Article

If universities want to ensure that they own inventions developed by academic staff in the course of their employment, they need to review their IP arrangements and take immediate steps to ensure that they have properly secured those rights.

The High Court of Australia has refused the University of Western Australia's (UWA) application for special leave to appeal the Full Court of the Federal Court's decision in University of Western Australia v Gray ([2009] FCAFC 116 (3 September 2009), regarding the ownership of inventions developed by academic staff in the course of their employment.

 The decision

UWA sought leave to appeal on the basis that:

• the approach taken by the Federal Court to determine whether a university owns inventions developed by its academic staff in the course of their employment was not based on established law, and
  
• the 'inventive concept' test used by the Federal Court to determine when an invention is developed was not the correct test based on the requirements of the Patents Act 1990 (Cth).

The High Court was not persuaded that, on the facts, any of the inventions were actually made by Dr Gray in the course of his employment. On that basis the court refused special leave. The court effectively sidestepped the question of whether a term regarding ownership of inventions by UWA was implied in Dr Gray's employment contract.

Lessons for universities

Gummow J commented that 'on a practical level the lesson of this case may be [that] there is a need for express arrangements'.

Many universities already have express arrangements in place to secure ownership of inventions developed by academic staff in the course of their employment. However, universities that do not already have these arrangements in place but wish to own inventions developed by academic staff in the course of their employment need to take immediate steps to ensure that they have properly secured those rights, including by:

• detailing position descriptions for employees, including any specific duties they have (including, where appropriate, any duty to invent that may apply to the position) 
  
• including express terms (such as assignment of IP ownership by the university) within employment contracts 
  
• obtaining deeds of IP assignment from academic researchers before commercialising or licensing IP 
  
• ensuring that their IP policies and procedures comply with the university's statutes and regulations, and
  
• using appropriate means to promulgate their IP policies to ensure they can be incorporated into contracts of employment with academic staff.

Universities also need to ensure that funding and licensing agreements accurately reflect the university's ownership of its IP (and carefully consider what warranties can be given by universities regarding IP ownership).