Is it Time to Codify Principles for Ownership of Academic Employee Inventions? The Disconnect between Policy and the Law
Monash University Law Review (2012) 38(1), 102-118.
25 Pages Posted: 1 Mar 2013 Last revised: 23 Mar 2017
Date Written: June 30, 2012
The principal aim of this article is to establish a preliminary case that supports a review of the current law on ownership of employee inventions in Australia commencing with academic employee inventions. The inevitable (and obvious) conclusion following the decision of the full Federal Court in University of Western Australia v Gray (2009) 179 FCR 346 is that universities must strengthen their contractual position in relation to rights in future inventions that they seek ownership of if they are to manage inventions in the manner expected by granting bodies and the government. However, this is not as simple as it may appear. Cases such as Gray and Victoria University of Technology v Wilson (2004) 60 IPR 392 demonstrate the complex and diverse administrative and regulatory environments within universities, and of the conduct of academic research within them and how these will inevitably involve the risk that an express claim to future inventions may be unenforceable. If express terms fail, there remains a ‘disconnect’ between the default common law principles and the usual conditions that universities aim to enforce in their employment contracts. This is not conducive to clarity of ownership: a critical factor in maximising research productivity, knowledge creation and dissemination, as well as attracting investors to support further research and development.
Keywords: academic inventions, ownership of employee inventions, UWA v Gray
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