Academic employees and their university employers: who owns the inventions they create?

A special seminar by Professor Ann Monotti, Faculty of Law

Date:      Thursday 22 October 2009
Time:      1.10 pm to 2.00 pm
Venue:   Staff Library, 2nd floor, Law Building, Monash University, Clayton Campus

RSVP:    By 16 October 2009 to Toni.Waser@law.monash.edu.au  or phone 990 59335.

About the seminar:

In the context of the recent full federal court decision in UWA v Gray, this seminar discusses the general issue of ownership of inventions created by academic employees and explores the legal implications of the decision for universities. In UWA v Gray, the university failed to enforce any express claim to own Professor Gray’s inventions which resulted from his research at UWA. Consequently, it was forced to argue its entitlement on the basis of general legal principles: academic employees who have a duty to carry out research must assign any inventions they create arising from that research to the university. Both Justice French at first instance and the full federal court dismissed the argument, deciding that different principles apply to universities because of their special nature. They decided that a duty to carry out research does not necessarily incorporate a ‘duty to invent’. Universities who seek to own such inventions must assert those rights through express contractual provisions.  

About the presenter:

Ann Monotti is Professor and Associate Dean (Postgraduate Studies) in the Monash University Law School. She has conducted research over many years into the issues concerning universities and their ownership and exploitation of intellectual property. Her Monash PhD was awarded on the basis of the book of which she is the principal author: Universities and Intellectual Property, Ownership and Exploitation (Oxford University Press, NY in 2003) (with Sam Ricketson). Her writings in this book influenced all judges in the UWA v Gray litigation to recognise that the special nature of universities requires different principles at law to govern ownership of employee inventions. Ann has taught patent law in the Monash LLM for many years and is the author of the patents, confidential information and plant breeders’ rights chapters in Davison, Monotti & Wiseman, Australian Intellectual Property Law published in 2008 by Cambridge University Press. In addition, she has published widely in both Australian and European journals on copyright and patent related issues, is an Australian correspondent for the European Intellectual Property Review and a member of the Intellectual Property Committee of the Law Council of Australia.