On 10 November 2011, the Australian Patent Office issued a decision finding that one of two related patent applications was rightfully owned by the inventor’s employer, but the other was owned by the inventor himself.
Both patent applications related to a viral diagnostic method and were filed in the name of the inventor, Dr Robert Alexander. However, according to a Delegate of the Australian Patent Office, the application directed to an improved viral recovery medium should proceed solely in the name of The Royal Children’s Hospital (RCH), because as part of his role as Head of Virology at RCH, one of Dr Alexander’s duties was to improve viral diagnostic techniques. However, the delegate found that the second application, directed to a well device suitable for use in the diagnostic method, was legitimately owned by Dr Alexander, because there was no motivation for Dr Alexander to improve the well device in the course of his employment.
The decision was based on the authority of the Full Federal Court in University of Western Australia v Gray  FCAFC 116, ownership being resolved by considering whether Dr Alexander had a ‘duty to invent’ under any express or implied terms of his employment contract with RCH.
The decision is subject to appeal to the Federal Court, but we are not aware of an appeal having been filed.
Contact: If you have any specific enquiries about this decision, or ownership of inventions more generally, please contact Debra Tulloch.