find the latest legal job
Corporate Counsel and Company Secretary
Category: Generalists - In House | Location: Newcastle, Maitland & Hunter NSW
· Highly-respected, innovative and entrepreneurial Not-for-Profit · Competency based Board
View details
Chief Counsel and Company Secretary
Category: Generalists - In House | Location: Newcastle, Maitland & Hunter NSW
· Dynamic, high growth organisation · ASX listed market leader
View details
In-house Projects Lawyer | Renewables / Solar | 2-5 Years PQE
Category: Generalists - In House | Location: All Australia
· Help design the future · NASDAQ Listed
View details
Insurance Lawyer (3-5 PAE)
Category: Insurance and Superannuation Law | Location: Brisbane CBD & Inner Suburbs Brisbane QLD
· Dynamic organisation ·
View details
Legal Counsel
Category: Corporate and Commercial Law | Location: North Sydney NSW 2060
· 18 month fixed term contract · 3-5 years PQE with TMT exposure
View details
Landmark decision takes IP to High Court

Landmark decision takes IP to High Court

The University of Western Australia has lodged a last-minute plea for a High Court appeal in a bid to overturn its recent loss in a landmark decision regarding the ownership of inventions.

THE University of Western Australia (UWA) has lodged a last-minute plea for a High Court appeal in a bid to overturn its recent loss in a landmark decision regarding the ownership of inventions created at the university. 


The university's decision comes despite a devastating 3-0 ruling in the Federal Court that upset the assumption that universities, like private corporations, owned the inventions of their employees. 


The UWA launched the case in 2004 when it claimed that the lucrative anti-cancer inventions of an employee, former surgery professor Bruce Gray, belonged to the university and not the professor. 


The full Federal Court refused to read an implied duty to invent into Dr Gray's contract, saying universities had a distinct public role and researchers should have the freedom to choose the direction of their projects and share and disseminate their results. 


Law firm Phillips Ormonde Fitzpatrick partner, Chris Schlicht, said the university's decision to appeal is not surprising. "It's an important matter for the university ... A lot of time and resources would have been expended by both parties in pursuing this matter," he told Boardroom Radio in an audio interview published by The New Lawyer. 


Sydney-based Sirtex Medical, the biotechnology company of which Dr Gray is a founder, 

has previously disclosed that it has spent $5.5 million on the long-running legal dispute. Dr Gray, meanwhile, has retained his shareholding in the company, worth about $75 million, but has fallen out with it, and has lost his position as chairman. 


The grounds of the appeal have not yet been stipulated, but Schlicht said it is likely the central grounds of the appeal relate to Dr Grey's employment contract, which did not specify that he was required to invent anything. 


"The contract specified he was required to carry out research. So one of the issues was whether a requirement to carry out research could be translated into an implied duty to invent. And if such a an implied term could be incorporated into the contract, this provided a foundation for the uni to claim that it had an interest in the inventions. The university lost on that point," he said. 


UWA vice-chancellor professor Alan Robson said the university's decision to pursue was "a matter of principle". 


He said the Federal Court's judgment had "important ramifications for all university-initiated research". 


Professor Robson said the decision could stem the potential flow on benefits of intellectual property resulting from such research to the broader community. 


"Research and innovation undertaken within universities, by their very nature, build on the work of those who have gone before," he said. 


"We must ensure that this research - which will almost always be done for the benefit of the broader community - is recognised as university IP," Professor Robson said. 

Like this story? Read more:

QLS condemns actions of disgraced lawyer as ‘stain on the profession’

NSW proposes big justice reforms to target risk of reoffending

The legal budget breakdown 2017

Landmark decision takes IP to High Court
lawyersweekly logo
Promoted content
Recommended by Spike Native Network
more from lawyers weekly
LCA president Fiona McLeod SC
Aug 17 2017
Where social fault lines meet the justice gap in Aus
After just returning from a tour of the Northern Territory, LCA president Fiona McLeod SC speaks wit...
Marriage equality flag
Aug 17 2017
ALHR backs High Court challenge to marriage equality postal vote
Australian Lawyers for Human Rights (ALHR) has voiced its support for a constitutional challenge to ...
Give advice
Aug 17 2017
A-G issues advice on judiciary’s public presence
Commonwealth Attorney-General George Brandis QC has offered his advice on the public presence of jud...
APPOINTMENTS
Allens managing partner Richard Spurio, image courtesy Allens' website
Jun 21 2017
Promo season at Allens
A group of lawyers at Allens have received promotions across its PNG and Australian offices. ...
May 11 2017
Partner exits for in-house role
A Victorian lawyer has left the partnership of a national firm to start a new gig with state governm...
Esteban Gomez
May 11 2017
National firm recruits ‘major asset’
A national law firm has announced it has appointed a new corporate partner who brings over 15 years'...
opinion
Nicole Rich
May 16 2017
Access to justice for young transgender Australians
Reform is looming for the process that young transgender Australians and their families must current...
Geoff Roberson
May 11 2017
The lighter side of the law: when law and comedy collide
On the face of it, there doesn’t seem to be much that is amusing about the law, writes Geoff Rober...
Help
May 10 2017
Advocate’s immunity – without fear or without favour but not both
On 29 March 2017, the High Court handed down its decision in David Kendirjian v Eugene Lepore & ...