Employees & Intellectual Property - Who Owns It?

On 17 April 2008, Justice French of the Federal Court of

Australia handed down a decision that will potentially have

significant implications for organisations with staff that

create intellectual property that their employer wishes to

claim as its own.

University of Western Australia (UWA) v Gray (No

20) [2008] FCA 498 was an action between UWA and previous

employee, Dr Bruce Gray. There were additional parties to the

case and further causes of action which are not discussed in

this article due to the case's complexity.

Dr Gray had participated in the research and development of

technologies for the delivery of treatments for cancer while

working as an academic at UWA. After a long and difficult

relationship with UWA, Dr Gray left to form the biotechnology

company Sirtex. UWA commenced legal proceedings against Dr Gray

alleging that applications for patents were for inventions made

while Dr Gray was an employee of the UWA, and were the property

of UWA.

The critical issue for the judge was Dr Gray's

obligations as an employee of UWA. The...