Landmark decision takes IP to High Court

Landmark decision takes IP to High Court

04 March 2013 By Kate Gibbs

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. 

Landmark decision takes IP to High Court
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