Professional and academic employee inventions: looking beyond the UK paradigm

Abstract

The vast majority of inventions are devised by employees, raising the question who is entitled to patent them? Under the UK Patents Act 1977, the right to patent an invention lies primarily with its inventor(s). However, an exception exists for employee inventions to which section 39(1) applies. The recent decision of the Full Court of the Federal Court of Australia in UWA v Gray raises the question of the applicability of this provision in the university context, in respect of regular academic employees. In that case, the Court relied on UK authorities to support its conclusion that the University of Western Australia had no rights in respect of certain inventions devised by its former Professor of Surgery. In so doing it raised a question regarding the widespread assumption that section 39(1) applies indiscriminately, including in respect of academic inventions. In a forthcoming article ('Sewing the Fly Buttons on the Statute: Employee Inventions and the Employment Context' (2012) 32 OJLS) I question that assumption, arguing that section 39(1) is built around a private sector paradigm, and that there exists a 'rational reason' in the sense of Shanks v Unilever plc [2010] EWCA Civ 1283 for departing from that paradigm in certain cases, including those involving academic and professional employees. In the current paper I build on this argument by considering its support in modern law.