Business Innovation and the Law Perspectives from Intellectual Property, Labour, Competition and Corporate Law
Perspectives from Intellectual Property, Labour, Competition and Corporate Law
Edited by Marilyn Pittard, Ann L. Monotti and John Duns
Chapter 5: Establishing clear rights in academic employee inventions: lessons learnt from University of Western Australia v Gray
Researchers in business are likely to be engaged under express contracts to develop new products or processes in secret that will be manufactured and exploited for the sole benefit of their employer’s business. In contrast, the standard academic employment contract commonly expresses research duties in broad terms that reflect their right to pursue a freely chosen research question without any direction from an employer as to the nature of the question or the form in which to disseminate its outcomes. Most of this research will be disseminated openly and in ways that encourage public use and further development for the benefit of the community. However, some academic research will produce inventions with commercial potential that require protection under patent laws to realise that potential effectively. As the Australian Law Reform Commission (ALRC) concluded in the context of publicly funded research in its Genes and Ingenuity Report: ‘If research results are not protected effectively, they may fail to attract commercial developers and products that require considerable industry development may not be created. If valuable research is not identified and utilised appropriately, its value to the public may not be realised.’ The effective protection and utilisation of the value in patentable inventions requires clear identification of the owner of those inventions. In the case of employee inventions, a variety of legal principles will determine where ownership vests, namely: Section 15 of the Patents Act 1990 (Cth) vests all property rights in the inventors, thus recognising the pre-eminent position of the individuals
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