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Bio Technology : October 2009
46 Australasian BioTechnology Volume 19 • Number 3 • October 2009 AusBioFEATURE By Lynne Peach, Partner, and Kylie Diwell, Senior Associate, Minter Ellison Ownership of inventions by academic staff post UWA v Gray The Full Court of the Federal Court of Australia has shocked the research sector by unanimously upholding the first instance decision in University of Western Australia v Gray (No 20)  FCA 49. Despite the com- mon assumption that a university would own any invention developed as part of an academic employee's research activities, the court confrmed that this is not the case in all circumstances, especially where the employee has no express contractual 'duty to invent' as distinct from a duty to carry out research. The case concerned inventions developed by Dr Bruce Gray while employed as an academic by the University of Western Australia (UWA). Several patent applications were filed for these inventions in the names of Dr Gray and others. A company called Sirtex Medical Limited, of which Dr Gray was a director, was established to commercialise the technologies. The patent applications were not filed in UWA's name, and it had no rights to share in any commercialisation profits. The action brought against Dr Gray was on the basis that the inventions were developed by him in the course of his employ- ment and were owned by UWA. On appeal, UWA argued specifically that, in dealing with the inventions, Dr Gray had: breached his employment contract by failing to comply with an implied term of the contract which provided that UWA • (as his employer) owned the inventions developed by Dr Gray in the course of his employment; breached his employment contract by failing to comply with UWA's IP policies, which were incorporated into Dr Gray's • employment contract by reference; and breached a fiduciary obligation that he owed to UWA to by misusing UWA property rights. • In Australia and overseas, courts have readily implied into employment contracts terms requiring inventions and other intellectual property developed by an employee in the course of employment to be assigned to the employer. In considering Lynne Peach, Partner, Minter Ellison Kylie Diwell, Senior Associate, Minter Ellison