Intellectual property ownership in Australia

Presentation on 1 November 1995

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Not always your invention

"Get your agreement in place now!" said Greg Bartlett, chemical engineer and partner of patent attorneys Wray & Associates. Greg was presenting the ninth CIP breakfast seminar held at the Matilday Bay Restaurant overlooking the Swan River. Greg repeatedly stressed that if you or your company has made an invention, and even if issued with a patent, the invention may be owned by another. Ownership is complex and often contentious.

Generally the rights of an invention stay with the inventor. He noted an inventor is involved in the "conception at the heart of an invention" (and not one involved in subsequent development). The inventor owns and may assign the rights for its use to others. However, and picking up on the theme of the presentation, the owner of the invention may be another, especially the employer.

Without an agreement, the employer generally owns any invention made by employees. This even when its development is undertaken out-of-hours using the employee's own equipment. If the equipment belongs to the employer, ownership is even more definite, and that could include an employer's modem attached to a computer belonging to the employee!

Directors of companies must take particular care being even more tightly enmeshed by this principle than company employees. An invention could be deemed to be owned by the company at which they are a director even though the research was undertaken out-of-hours with their own equipment. Such examples serve to stress the importance of agreements said Greg. In any of these examples, an employer could assume an issued patent and replace their name with that of the inventor.

Interestingly consultants, and that includes corporations, are not employees for the purpose of the ownership of inventions. Consultants own the invention and can apply it at their will - even to the benefit of competitors of their clients for whom it was originally developed (and paid for).

A proper agreement was stressed repeatedly by Greg. A prior contract helps establish ownership and was therefore avoids subsequent litigation and uncertaintly. That said, in some situations a contract may not be enforceable if it restrains the employee or consultant pursuing gainfull employment in their normal profession. Such contracts may be overriden by the courts if the application of a patent inhibits the employee seeking to pursue a career.

Greg made special mention of universities and the CSIRO.

Without a contract of assignment, the rights of the invention are often retained by universities who regard themselves as employers, and by thre CSIRO who may sell or license the rights of the invention to others.

Therefore a contract properly prepared before it becomes a valuable invention, is critical stressed Greg - even more so with patents now being issued for 20 years.

The USA was singled out as their courts tend to claim the invention unless extreme care is taken. An invention is patentable in the USA even if described in a publication or in public use or sale anywhere in the world for less than a year before the application of the patent in the USA.

Greg stressed the complexity of his profession with another example and words of advice.

He noted that shapes of containers and even smells can become trademarks as long as they can be described in words.

Greg strongly recommended inventors should keep daily notes of research, with no blank lines, (and therefore not on computer which allows for entry variation) and ensure the records are signed by a witness.

With extensive questions throughout the presentation from an obviously interested audience, (that included Bob Becher the inventor of the synthetic rutile process with interesting anecdotes of his experience on patent ownership), the seminar concluded with a vigourous round of applause.

It is worth commenting that patents are now being applied to far reaching inventions that include computer software programs, genetic engineering and complex mathematical algorithms. The main restraint is that to be patentable, an invention must be new, useful and must not have been obvious to a person of ordinary skill in the art at the time it was made.

Clearly, the intellectual component of value adding can be significant and more than one business in Perth has been hurt by the movement of that intellect with changing employment of a member of their research staff. Greg clearly provided valuable pointers for many of our intellect-sensitive businesses - and contracts are fundamental.

© 1996; Chemlink Pty Ltd, PO Box 673, West Perth, Western Australia


Chemlink Pty Ltd ABN 71 007 034 022. Publications 1997. All contents Copyright © 1997. All rights reserved. Information in this document is subject to change without notice. Products and companies referred to are trademarks or registered trademarks of their respective companies or mark holders. URL: www.chemlink.com.au/

 

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Created: Thursday, 14 December 1995, 9:02:47 PM Last Updated: Thursday, 14 December 1995, 9:02:47 PM
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