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Bio Technology : October 2009
Volume 19 • Number 3 • October 2009 Australasian BioTechnology 47 AusBioFEATURE whether such a term should be implied into academic employment contracts as a class, the court held that it is necessary to take into account not only consequences within the employment relationship but also issues of justice and policy and social consequences. The court focussed on the character and purposes of UWA, including the fact that UWA was constituted for the specific purpose of teaching and researching and that Dr Gray was not only an employee, but also a member, of UWA. The court commented that: "It is the coalescence of teaching (with its dissemination of knowledge) and research (with its generation of knowl- edge) that is so characteristic of universities and (save in the case of the university researcher with no teaching responsibilities at all) differentiates the university from the researcher in private enterprise." In particular, the court found that the role of a university researcher is vastly different from that of a researcher in a private enterprise because the academic researcher enjoys the 'academic freedom' to: choose the subject and line of research and manner • of its pursuit; and share and publish research results without any • obligation of confidence to the university. The court found evidence of these freedoms in Dr Gray's employment arrangements because: although Dr Gray's employment contract required • him to carry out research in his area of expertise, it did not impose on him a 'duty to invent'. For example, Dr Gray was entitled to choose what research pathways he should pursue, and UWA did not require him to choose those pathways that were more likely to lead to inventions being developed; during his employment there was no duty on Dr Gray • not to disclose the results of his research, even if such disclosure would have destroyed the patentability of any invention developed in that research. In fact, Dr Gray and his team had a strong commitment to publi- cation and dissemination of their research results; Dr Gray and his team spent a significant amount of • time and effort securing funding for his research from sources external to UWA; and it was necessary for Dr Gray to engage in collaborative • activities with other research institutions to progress his research. The decision has serious ramifications for university-based research, particularly in the context of an increased focus on the commercialisation of research outcomes and pres- sure to derive revenue from research activities. If universities wish to own inventions developed by aca- demic staff in the course of their employment they need to review their IP arrangements and take immediate steps to ensure that they have properly secured those rights, including by: detailing position descriptions for employees, including • any specific duties they have (including, where appro- priate, any duty to invent that may apply to the position); including express terms (such as assignment of • ownership of IP by the university) within employment contracts; ensuring that funding and licensing agreements • accurately reflect the university's ownership of its IP (and carefully considering what warranties can be given by universities regarding ownership of IP); obtaining deeds of assignment of IP from academic • researchers before commercialising or licensing IP; ensuring that their IP policies and procedures comply • with the university's statutes and regulations; and using appropriate means to promulgate their IP • policies to ensure that they can be incorporated into contracts of employment with academic staff. Alternatively, as Justice French suggested in the first instance decision, universities could "consider the alterna- tive of deriving benefits from [such] inventions... by offering highly competent and experienced commercialisation ser- vices in exchange for a negotiated interest in the relevant intellectual property," rather than attempting the difficult task of asserting ownership over inventions developed by their staff. Universities have been awaiting the outcome of UWA's appeal before taking action. They now need to begin the difficult task of revisiting hundreds of academics' employment contracts and their IP policies, and nego- tiating more detailed position descriptions and specific IP ownership provisions with those individuals. Even a targeted approach of obtaining deeds of assignment of IP from academic researchers before commercialising or licensing technology they have developed will require significant resources. Many universities are not in a position to spend time and money on an exercise of this nature, particularly in the current financial climate. However, the court's decision has left many universities, corporate sponsors and other organisations involved in commercialising university re- search in a difficult position where they cannot be certain that they have right to deal with IP developed by university academic staff until this process has been undertaken.