Establishing Clear Rights in Academic Employee Inventions : Lessons Learnt from University of Western Australia v Gray

It is necessary to have clear principles for vesting ownership in academic employee inventions to maximise their efficient and effective protection under patent law and their further development and exploitation. The agreed default policy that Australian granting bodies and universities adopted from the early 1990s was one that would vest legal title in employee inventions in the university on the assumption that it was best placed to protect and manage the rights in a fair and reasonable way for the benefit of all interested parties. This vesting of legal title was not to be absolute: there was a common understanding that the common law implied term would not produce an appropriate outcome for university inventions. The common law implied term as to employer ownership of employee inventions no doubt played some part in the largely universal acceptance of this default legal ownership position but the term did not dictate the actual outcomes in terms of vesting of beneficial interests in the invention. The full Federal Court in University of Western Australia v Gray negated this underlying assumption of university entitlement and opened the doors for reinvigorating the debate as to who should own the inventions that are created by academic employees during their employment. However, in any debate that might ensue it needs to be recalled that the negation of the implied term in law is one factor among many that are relevant to the development of policy in this area. It is expected that express contracts that govern the specific circumstances and that are negotiated within a collegiate and co-operative environment will apply to the vast majority of cases where inventions are patented and exploited. However, a default position that recognises the need for some fair and reasonable balance of beneficial interests is important to protect the rights of all interested parties against the individual who seeks to exclude others from the fruits of commercial exploitation of an invention to which they have contributed in some identifiable way that warrants some tangible recognition