The decision of the Full Federal Court handed down on Thursday on the intellectual property rights concerning inventions made by university professors has been criticised as out of touch with modern scientific practices, say legal experts.
Allens Arthur Robinson partner Richard Hamer said the decision in University of Western Australia v Gray that there could be a duty to conduct research, but not to invent, in an academic environment, seemed anachronistic.
He argued that the Federal Court's findings appeared to be rooted in 19th century British concepts that saw academic research and invention as two different fields.
"Academic research was an 'ivory tower' occupied by pure academics who published research but did not file patents, while inventions occurred in a workshop occupied by practical workmen of industry," he said.
"This aspect of the decision is quite out of touch with modern scientific research practices, where research and invention are usually two aspects of the same work performed by the same people."
The case involved Dr Bruce Gray, who was appointed to the University of WA in 1985 and in the course of his research developed a number of cancer treatment technologies.
After ceasing full-time employment at the university in 1997, Gray assigned the IP rights to the inventions to a third party for commercial purposes.
The university argued that there was an implied term in the employment contract that meant the IP belonged to the university.
Hamer said the court's decision in University of Western Australia v Gray meant that universities should now ensure academic contracts contain express provisions that deal with any IP produced by academics.
Middletons intellectual property partner Jane Owen said the judgement was a strong declaration of a general principle of academic freedom to research and own IP in the research - free of any entitlement of the university. She said the decision could have implications beyond universities.
"The typecasting of academics who invent as a special class of employee could be extended to other research institutions, especially those funded by the public purse. Freedoms on publication and collaboration are key indicators of this potential," she said.
Hamer and Owen both warned that third parties would also need to take care.
"Third parties engaging in collaborative research with university academics and other public institutions should conduct due diligence to ensure that clear title to research outcomes can be achieved and seek appropriate warranties to cover this type of situation," Owen said.
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