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Hospital and doctor dispute on the duty to invent ends in 1-1 draw

22 November 2011

Dr Alexander: “They’re both mine.”

Royal Children’s Hospital: “No, they’re both mine.”

Commissioner of Patents: “Stop fighting – you can each have one.”

And with that* the Patent Office resolved a recent dispute between the Royal Children’s Hospital (“RCH”) and one of its doctors over the ownership of two patents. Ultimately, the Patent Office held that Dr Alexander had a limited duty to invent, which entitled the RCH to ownership of one of his inventions (the decision is available here).

[*DISCLAIMER – while we were not at the hearing, it is safe to assume these were NOT the submissions actually made by the parties.]

As recently confirmed in University of Western Australia v Gray (you can read about that case

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here and here), an invention developed by an employee in the course of their employment belongs to the employer. The key question in this case was whether Dr Alexander’s employment included a ‘duty to invent’ such that an invention created within the scope of that duty would be within the course of his employment and therefore, belong to his employer.

The hearing officer found that this case was not analogous to the circumstances in Gray, in which the Court held that Dr Gray did not have a duty to invent. The hearing officer’s basis for distinguishing the two cases can be seen in the following table:

Dr Gray Dr Alexander

Had academic freedom to select research

Had limited discretion with research, required to focus on improving viral diagnostic techniques used at the hospital

Work did not directly benefit employer

Work directly benefited employer and advanced their interests

Obtained external funding

Did not obtain external funding

Inventions were unrelated to the primary purpose of the university

Research related to the primary purpose of the hospital

Was not obliged to keep results of research confidential

Not obliged to keep information confidential but this could not be expected in a hospital environment where there is a public interest in sharing new methods and techniques

Unlike Dr Gray, Dr Alexander did have a duty to invent, but this was limited to circumstances where he:

  • recognised a problem which he would have been reasonably expected to resolve; or
  • was otherwise motivated to pursue an avenue of research in the reasonable expectation of identifying potential improvements.

The hearing officer also held that the Intellectual Property Policy imported into Dr Alexander’s contract, which stated that ‘Intellectual Property generated by employees during the course of their employment’ belonged to the hospital, did not alter this finding. The policy simply reflected the position at common law.

Of the two patents in dispute, the hearing officer found that only one was created in the circumstances listed above. As a result, the RCH was entitled to this patent.

With this result, the RCH and Dr Alexander were made to feel the pain so commonly felt by soccer fans worldwide.

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