Who Owns IP Produced 'On The Job'?

"..[A] duty to research does not carry with it a duty

to invent". These words, handed down in a recent Federal

Court judgement by Justice French, have many Australian

employers (such as universities and other R&D facilities)

now frantically reviewing their contractual arrangements with

staff and IP ownership policies, which may no longer afford

them the legal protection they once assumed.

The case of University of Western Australia v Gray (No.20)

[2008] FCA 498 considered the validity of an employer's

claim to IP developed by one of its employees during the course

of their employment. The case relates to a claim by UWA that

since Dr Bruce Gray had developed cancer-treating technologies

on work time whilst an employee of the university, title in the

derived IP rights was vested in the university. Gray's

counterargument was that he was required by his terms of

appointment to teach students and to conduct research -

not to "invent", per se.

UWA, in turn, asserted that it was an implied term of

Gray's employment contract that IP developed throughout the

course of his...