Australia: University of Western Australia v Gray - Medical Research IP Rights: Who Owns Them ?

Health Law Bulletin
Last Updated: 7 April 2010
Article by Alison Choy Flannigan

Hospitals who wish to commercially benefit from health and medical research need to know who is involved in that research, their level of contribution and their relationship with the hospital.

Many hospital operators are involved in health and medical research and their relationship to researchers is relevant to who owns the intellectual property rights arising out of that research.

Research may be carried out under many different circumstances. For example, where:

  • The hospital is the institution at which clinical trials are carried out.
  • The research is connected with educational activities carried on at the hospital.
  • The hospital engages in joint research efforts with colocated public hospitals.
  • The hospital carries out joint research with universities and health and medical research institutes.
  • The hospital initiates and sponsors research.

The research can involve a number of people including health care practitioners who are employees of the hospital, health care practitioners who are contracted as independent contractors to the hospital, medical practitioners who are accredited at the hospital, hospital staff and students. In many cases medical practitioners may also be academics with universities or associated with universities and/or health and medical research institutes. In some cases researchers commence their research at one institution and continue at another. In other cases a myriad of institutions and/or their employees become involved in research projects. Each of these different relationships is relevant to the ownership of intellectual property in any works or inventions which arise from the research.

Asserting Ownership Rights

If the hospital wishes to assert ownership rights over valuable intellectual property (by way of registration, licence, sale or commercialisation), then the hospital will need to establish who was involved in creating or inventing those works and inventions, the level of their contribution and their relationship with the hospital. A prospective funder, investor or purchaser of the intellectual property will require proof of ownership and will undertake due diligence.

The law regarding the ownership of intellectual property rights has finally been settled with the High Court refusing special leave to appeal in the case of University of Western Australia v Gray [2010] HCATrans 11 (22 February 2010), from the Full Federal Court's decision in University of Western Australia v Gray (2009) 259 ALR 224 (UWA v Gray).

The Case

In UWA v Gray Dr Gray was appointed as a Professor of Surgery with the University of Western Australia (UWA). He changed from full time employment to a fractional thirty percent appointment, focussing on clinical work at the Royal Perth Hospital while remaining Professor of Surgery.

As a full time employee, Dr Gray was required by the terms of his appointment to teach, to conduct examinations and to direct and supervise the work in this field and to undertake research, to organise research and generally to stimulate research among the staff and students.

Dr Gray was involved in inventions which involved the production and use of microparticles or 'microspheres' for the targeted treatment of cancerous tumours in humans, notably in the liver.

In 1997 Sirtex Medical Pty Limited (the second respondent) acquired from Dr Gray and the Cancer Research Institute (the third respondent and a body that had been established to support Dr Gray's research work), intellectual property rights arising out of the inventions. A substantial number of shares in Sirtex were issued to Dr Gray in consideration for the assignment of the intellectual property rights.

UWA claimed that Dr Gray, by reason of his employment, had obligations to UWA in respect of the inventions and therefore UWA had proprietary (ownership) rights in the patents. UWA claimed that Dr Gray had breached his employment contract and had breached his fiduciary obligations. UWA's case depended on the proposition that it was an implied term of Dr Gray's employment contract that intellectual property developed in the course of his employment belonged to UWA.

The primary judge reviewed the history of Dr Gray's employment, the people with whom he worked and the work they carried out, the various relationships and Dr Gray's attempts to commercialise the technologies. Prior to his appointment with UWA, Dr Gray had, for some years, including at the University of Melbourne and at St Vincent's Hospital in Melbourne, been engaged in researching the treatment of liver cancer by using microspheres injected into the blood vessels of liver to deliver anti-cancer therapies to tumour sites.

The complexities of university and hospital involvement and the relationships in this case are common to Australian health and medical research generally.

The primary judge found that under his contract of employment, Dr Gray had no duty to invent anything, though he had a duty to research and to stimulate research. He had not been engaged to use his inventive faculty in an agreed way or for an agreed purpose for UWA's benefit. The Full Federal Court agreed with the primary judge's reasons and conclusions. Dr Gray's employment duties did not even require him to perform tasks from which inventions might result. The subject matter and the manner of discharge of his duty to research were in his discretion. He was not employed to invent. Also, UWA's claims (including obligations of confidentiality) were inconsistent with the researcher's freedom to share and to publish research results. Further, many of the funds were granted for Dr Gray's research as he determined. In addition, it was necessary for the research to involve collaborative arrangements with external organisations.

Therefore, in conclusion, the Full Federal Court held that the UWA did not own any proprietary rights in the inventions. In the words of the Full Court, 'the employee invention implied term is a particularly blunt instrument to settle the ownership of employee inventions' (emphasis added).

Practical Implications

This case clearly demonstrates the need for hospitals involved in health and medical research who wish to commercially benefit from that research to do the following:

  • Keep a record of research activities at the hospital, including identifying the research, who is involved, their tasks and involvement and their relationship with the hospital.
  • Clearly set out in contractual documents with researchers, and policies and procedures with both employees and independent contractors, clauses which expressly set out the ownership in intellectual property rights and obligations of confidence.
  • Implement an intellectual property policy and procedure.
  • Seek legal advice regarding the registration of intellectual property.

© DLA Phillips Fox

DLA Phillips Fox is one of the largest legal firms in Australasia and a member of DLA Piper Group, an alliance of independent legal practices. It is a separate and distinct legal entity. For more information visit www.dlaphillipsfox.com

This publication is intended as a first point of reference and should not be relied on as a substitute for professional advice. Specialist legal advice should always be sought in relation to any particular circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions