Case Studies
Issue No. 49 - October/November 2009
Landmark decision on who owns IP
In September, the Full Federal Court dismissed an appeal in University of Western Australia v Gray (No 20), giving Dr Bruce Gray rights to the IP he had developed while in paid employment at the university – and $7million in proceeds.
Brett Cowell, Chairman of Partners at law firm Cowell Clarke, has been following the case and says it holds important implications not only for universities, but for all organisations whose staff members are engaged in activities which may result in the creation of intellectual property rights.
“An organisation may think just because a person is an employee, any IP created by that person during or somehow connected with his or her employment will belong to the organization,” Brett says.
“However, this may not be the case, especially where the employee’s terms of employment or position statement do not require or recognise the creation of IP rights, or where the employee has been engaged in creating relevant IP prior to employment or outside the course of employment.”
For example if an employee pursues funding or commercialisation options independently, but with the employer’s consent, it could work against the employer’s claim of ownership.
Having internal regulations or policies dealing with IP ownership may not help the employer unless those regulations form part of the employee’s terms of employment, or are otherwise lawfully binding upon
the employee.
“In this case, the Unive...
