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Academic wins intellectual property rights -

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ASHLEY HALL: The Federal Court has upheld a ruling that a university academic from Western
Australia can retain the intellectual property rights over his invention.

Professor Bruce Gray invented anti-liver-cancer agents while working for the University of Western
Australia in the 1980s.

When they became commercially successful the university tried to gain intellectual property rights
but the court found that the university can't claim ownership because his job description didn't
include a duty to invent things.

Carly Laird reports on the implications of the decisions for Australian universities.

CARLY LAIRD: Whether universities or academics can claim intellectual property rights over
inventions has been a contentious issue around the world for some time.

Daniel Stewart is a research fellow at the Australian National University and is focusing his
research on intellectual property law.

He explains why this court ruling favoured the academic involved, professor Bruce Gray.

DANIEL STEWART: The primary issue in the case is whether or not there could be some sort of implied
term in the contract of employment to say that although the employment contract expressly required
Dr Gray to carry out research, whether or not there could be a further term implied into that
employment contract that that also required Dr Gray to carry out invention.

And it was the requirement to invention that meant that the employer would be entitled to claim any
intellectual property rights that might be associated with that invention.

CARLY LAIRD: Daniel Stewart says since the 1980s universities have attempted to change their
employees' contracts so they can financially benefit from their academics' inventions.

DANIEL STEWART: Various universities around that time and subsequently have attempted to
incorporate requirements to invent into the contractual terms or through some other mechanism tried
to place obligations on their academics to share the returns from invention with the university.

CARLY LAIRD: Dr Michael Spence is the vice-chancellor of the University of Sydney and has a
background in intellectual property law.

He says that because universities provide the resources that lead to inventions they have every
right to be compensated for the cost of that research.

MICHAEL SPENCE: Where the public purse has funded the research, as it usually has, it just seems
fair that the public should benefit from the fruits of the research. Not entirely, of course the
inventor should have a share and that's the kind of profit sharing arrangement that we have here at
the university and that is well really quite normal internationally.

CARLY LAIRD: But does the public benefit if there are patents at all on these inventions?

MICHAEL SPENCE: Ah well that's a much more difficult question. That's a question that has to do
with the role of patents in the commercialisation of research. And of course at that stage it's
important to attract private industry money and often that money won't be available unless there is
some intellectual property protection over the invention.

CARLY LAIRD: But don't universities have a role in breaking that cycle?

MICHAEL SPENCE: This is an extremely complicated area of public policy. I think there is an
argument that there ought to be particular kinds of patent exemption to support the work of
researchers in universities. But that's not really the issue we're looking at right now.

We're looking at the situation in which there has been a patent on an invention that's flowed from
a piece of research conducted during the course of employment and whether or not there ought to be
a sharing of the profits of that research between them.

I think in that situation a profit sharing solution is intuitively right.

CARLY LAIRD: Carolyn Allport is the president of the National Tertiary Education Union. She agrees
that academics and universities should work together.

CAROLYN ALLPORT: Traditionally there's a sort of a general split - a third to the institution, a
third to the department, a third to the researcher. In the long run you know we have to work in a
collaborative way.

CARLY LAIRD: But she's also worried that as a result of this most recent case, while seeking to
ensure their profits universities will make unfair contracts for their employees.

CAROLYN ALLPORT: It's important to give some degree of incentive to academics in order for them to
lift our capacity to innovate and provide the world standard research that we do.

Now what I fear is that universities might take a very, an attitude of wanting to stop that
immediately and to change people's contracts.

CARLY LAIRD: If academics do gain intellectual property rights 100 per cent to their inventions,
should they then be made to pay back some of those resources?

CAROLYN ALLPORT: We have already had a previous intellectual property case at Victoria University
where that question was examined and in that case there was a clear identification of resources
being given back to the university or an exchange of money if it was, if the particular invention
at that stage at VU was commercialised. And that was eventually negotiated.

CARLY LAIRD: The University of Western Australia is now considering taking their appeal to the High
Court.

ASHLEY HALL: Carly Laird.