A 'duty to invent' some things, but not others - Royal Children’s Hospital v Robert Alexander

The Australian Patents Office (APO) recently considered an application brought by the Royal Children’s Hospital (RCH) under sections 32 and 36 of the Patents Act 1990 (Cth) (Act). The RCH sought a determination by the APO that the RCH was entitled to the inventions that were the subject of two patent applications filed by its employee, Dr Robert Alexander.

The APO undertook an analysis of the scope of Dr Alexander’s employment duties and determined that RCH was entitled to one of the inventions, but not the other.

Following on from the 2009 Full Federal Court decision in University of Western Australia v Gray 2, this decision provides an interesting insight into how the APO assesses ownership of employee inventions and, in particular, the circumstances in which an employee has a ‘duty to invent’.

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Frances Wheelahan

Partner. Melbourne
+61 3 9672 3380