In University of Western Australia v Gray
(No 20) [2008] FCA 498 the Federal Court of Australia rejected a claim by the University that ownership of an invention relating to cancer treatment belonged to it and not its employee who was appointed to teach and to conduct
and stimulate research. Gray’s conditions of appointment did not expressly reserve the ownership of inventions to the University.

It was a fiercely contested and complex matter: The trial of the action lasted some 50 days with the Court sitting
extended hours most days to ensure that the trial was finished
within the
available time.  There were some 4,586 pages of transcript and more than 1,000
documentary exhibits.  Much of the case
was based on the documentary evidence which related to a 20 year period.

The trial judge remarked: It would seem that the only secure way for UWA to acquire property
rights from its academic staff in respect of intellectual property
developed by
them in the course of research at UWA is by express provision in their contracts
of employment.  Even then, as this
case demonstrates, the transaction costs of
administering and enforcing such provisions and the uncertainty surrounding
their scope
and application, raises a real question as to their utility.

In this case the employee had no duty to invent and therefore the issue was whether his inventions were created in the course of his employment.

The common law provides that "Where an employer is entitled to the benefit of an employee’s
invention by express provision or by implication, the employee
will hold the
invention in trust for the employer. " But the common law did not apply to this particular case of an academic employed by a university to undertake
research and other
duties with no duty to invent.

The judge concluded:

"Research of the kind that Dr Gray was engaged to do carried with it the
possibility that he would develop inventions capable
of attracting patent
protection.  The duty to undertake research could be discharged in a variety of
ways.  These were within the
discretion of the researcher. One of the ways in
which the duty could be discharged was the development and testing of new
technologies.
It could be said therefore that an invention made in the course of
Dr Gray’s research activities as an employee of UWA was
an invention made
within the scope of his employment and doing what he was employed to do.  It
does not follow that there was an
implied term that the rights to which his
invention gave rise belonged to UWA….

In my opinion the circumstances of Dr Gray’s employment at UWA
and those of the other academics employed as researchers
with him negated the
implication of any term whereby UWA acquired rights in relation to inventions
developed in the course of their
research. In that respect the case
demonstrates the validity of the cautionary observation by Monotti and Ricketson
in their book
Universities and Intellectual Property – Ownership and
Exploitation (Oxford University Press, 2003) (at p 6.59):

… it will be unwise for a university to rely upon general principles if its
intention is to claim title to inventions that are
made by its academic
employees during their working hours and using university facilities and
funding."