Patent Ownership on the World Stage

Prospective patentees of inventions that involve academic inventors would do well to revisit their employment contracts, collaborative agreements and internal procedures in view of the September 3, 2009 decision of the Full Court of the Federal Court of Australia in University of Western Australia v. Gray1.

In this case, the Full Court considered whether the employer, the University of Western Australia (UWA), was entitled to own an invention of one of its employees, Dr. Bruce Gray. Under the terms of his appointment, Dr. Gray was required "to undertake research and to organize and generally stimulate research among the staff and students." A previous lower court decision considered the disputed ownership of a number of inventions relating to targeted treatments for cancer which were alleged to have been made by Dr. Gray during his term of employment with UWA2. On appeal, only one of these inventions was at issue.

The University argued that the provisions of its Patent Regulations, as set out in the University of Western Australia Act, formed part of the terms and conditions of Dr. Gray's contract. The Regulations required inventors of inventions made or developed using the University's facilities to immediately inform the Vice-Chancellor, allowing the...