Innovation
Issue No. 51 - February/March 2010
Whose IP is it, anyway?
Many universities and university academics undertake contract research for private and public companies as well as government bodies. It is also common for these types of entities to collaborate on research projects a good example of which is the establishment of Co-operative Research Centres (CRCs) utilising Commonwealth and member funding.
This contract research and these collaborative projects often generate significant amounts of valuable intellectual property (IP). When it comes time to commercialise this IP, one of the first questions to ask is - who is the owner? As a result of frequently complicated arrangements between the interested parties, this is not always a simple question to answer. This was demonstrated by a recent decision of the full court of the Federal Court of Australia.
University of Western Australia v Gray [2009]FCAFC 116 involved the development of microsphere technology for treating liver cancer by Professor Bruce Gray (Gray), Professor of Surgery at the University of WA. Prof Gray developed the technology while employed by the UWA.
The patent applications for the technology were made in Prof Gray’s name and in the name of a funding body established to fund his research called the Cancer Research Institute. Later, Gray and CRI assigned the rights to the IP to a company called Sirtex Medical Ltd.
Realising the significance of Gray’s inventions, UWA sought to claim ownership of the IP. Specifically, UWA claimed that by applying for the relevant patents in his own name and that of CRI, and then assigning that IP to Sirtex, Gray had breached his employment contract and fiduciary obligations to his employer.
The claims for breach of contract were based on two sets of regulations passed by the UWA under the University of Western Australia Act 1911.
Prof Gray’s employment contract with UWA stated that any such regulations formed part of that contract.
The claim for breach of
fiduciary duty ...
