Universities and Patents

Heads, from TCD Research and Innovation Site.In Ireland, the law relating to patents is governed by the Patents Act, 1992 (here and here) as amended in 2006 (here and here). According to the Irish Patents Office, a patent

confers upon its holder, for a limited period, the right to exclude others from exploiting (making, using, selling, importing) the patented invention, except with the consent of the owner of the patent. A patent is a form of ‘industrial property’ [IP], which can be assigned, transferred, licensed or used by the owner.

The same site also clarifies that any person

may make an application for a patent; the right to a patent belongs to the inventor or the inventors’ successor in title. However, if an employee makes an invention in the course of his/her employment the right to the patent may belong to the employer.

Unsurprisingly, therefore, my employer (Trinity College Dublin) claims ownership

… of all IP created by College Staff in the course of their employment and/or in the fields of expertise in which they choose to work, and thus inventors are required to assign their rights to the College through Innovation Services. In return for this assignment, College contracts with the creators of the IP to share with them any financial benefits received, in accordance with College Regulations.

However, the cat [not this one] has been well and truly thrown among the pigeons by an Australian decision, on similar legislation, by French J in Federal Court of Australia in University of Western Australia v Gray (No 20) [2008] FCA 498 (17 April 2008), a case greeted thus by today’s Sydney Morning Herald:

Universities shudder over patent ruling

EMPLOYERS’ claims on patents for inventions made by their staff may be under threat after a landmark Federal Court ruling in a case pitting the University of Western Australia against one of its former academics, Sirtex founder Bruce Gray. … The case arose after Dr Gray, a professor of surgery, developed a promising new liver cancer treatment while working as an academic at the university. Dr Gray then left to form a biotechnology company, Sirtex, which included some of his intellectual property among its assets when it floated in 2000.

Four years later UWA started legal proceedings against Dr Gray for wrongly appropriating the intellectual property, but this month the judge found in his favour in a decision that pivoted on the professor’s obligations as a university employee.

“Absent express agreement to the contrary, rights in relation to inventions made by academic staff in the course of research and whether or not they are using university resources, will ordinarily belong to the academic staff,” Justice French said.

“The position is different if staff have a contractual duty to try to produce inventions. But a duty to research does not carry with it a duty to invent.” …

Unsurprisingly, the University has said that it is considering an appeal.

Now, if only I had a patentable invention, I could see just how robust the policy is …

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