The ownership of Intellectual Property is not supposed to be difficult.
Inventors invent either individually or collectively and either independently or at the specific direction of an employer.
Inventors invariably assign the patent (or patent application) to another party, being either a corporate entity controlled by the inventor or an entity nominated by a financial stakeholder.
This writer described the story behind the development of Viagra way back in November 2006, http://archive.i2p.com.au/?page=site/article&id=564 with humour, despite the legal seriousness.
The complexities and infighting in the Viagra story would have made for a great “Beverly Hills cop”………..I can just see the very funny Serge offering his “lemon twist” with a Viagra!
Here in our own backyard catfight has erupted over ownership of some complex medical material, which is the technology surrounding the use of micro spheres specifically to target a radioactive payload to kill liver cancer cells while sparing normal liver tissue.
Yep, it’s a mouthful, but of course the University and Research Communities thrive on this material.
The University of WA (UWA) is far from pleased that a recent decision handed down in the Federal Court was favourable to Professor Bruce Gray and Sirtex Ltd.
The UWA sued the good Professor and Sirtex Ltd over ownership of the Intellectual Property of the technology described above.
Professor Gray was appointed Professor of Surgery in 1985 of the UWA so it was argued by the UWA that they are the rightful owners of the said technology.
No assignment agreements existed between Professor Gray and the UWA.
Professor Gray was contracted by the UWA to teach, undertake research and stimulate research among staff and students, he was not engaged to specifically invent, as per se.
It is of course perfectly reasonable to assume that inventions would emerge from such exalted academic endeavour.
The UWA apparently “assumed” work conducted by Professor Gray that resulted in invention would naturally become the property of the University.
Given the absence of an assignment agreement between the Professor and the UWA Justice French found in favour of the Professor.
Whilst this is a warning to all, the Patents Act of 1990 does not provide a mechanism for employers to claim ownership of an employee’s inventions discovered in the course of their employment. This matter has created much discussion amongst all stakeholders in the patent and university/research World, but in truth it might be a simple matter that may well have been avoided if the Professor had entered into a contract that included the task of inventing in the original job description offered by the UWA when he was appointed Professor of Surgery.
Software programmers are notorious for their often precious behaviour when it comes to paid work they have undertaken for others.
How often do we hear stories of Programmers charging $90 per hour to a client and then claim ownership of the work?
Yes, it may be that Programmers solve, improve, design and integrate their work during the course of a commercial arrangement.
It is questionable though that they “invent” in the true sense of invention.
The inventor in this case is the person providing the task and commissioning the Programmer to conduct the work.
Whilst it is arguable that Software is an invention, it is Copyright and able to be Patented, usually in conjunction with accompanying Hardware.
As we all know, it is folly to engage a programmer without a specifically designed contract in place that delivers ownership to the entity or person engaging the Programmer.
I wonder why Universities appear slow to catch on……….
By the way………….I was lurking in the corridors of the Novotel at St Kilda during the Clinical Pharmacy Educational Seminar and had the opportunity to catch up with a couple of friends. One friend, a well known Community Pharmacist with a long history of being involved in the political snake-pit of Pharmacy bemoaned the difficulty in securing “fee for service”.
I rather unnecessarily pointed out that while the public perceive Pharmacies as being a “Retail Shop” rather than a place of ‘Health Care” fee for service will be out of reach for many.My friend quite rightly pointed out the fact that the “Supermarket” Pharmacies have not helped at all.
Yes, this is of course true. However, in any solution industry stakeholders may contemplate regarding securing remuneration for service it would be wise to consider that irrespective of the view Pharmacists have regarding whether a Pharmacy is a ‘Shop” or a “Clinic”, it is ultimately the public that will drive the end result.
With all sorts of retail disguises being worn by Pharmacy raiders such as Colesworth, Woolworth’s and others that will soon sail across the Pacific it is reasonable to suggest that for a “fee for service” culture to succeed a new model may emerge.
Would a Pharmacy model based on a smaller (lower rent) footprint that provides only prescription Medicines, Pharmacy only Medicines, and Pharmacist only Medicines and associated products such as sports bandages and Medical Aids succeed?
The much loved expression “Community” Pharmacy may disappear through necessity and be replaced with “Clinical Pharmacy”.
Let’s face it, the word “Community” hints at “Free”, and that’s exactly what Pharmacists are trying to overcome. Many members of the public are more likely to pay a fee for service to a “Clinical Pharmacist” in an environment not dissimilar to a Medical Centre.
Somewhere there is a middle ground between the Whorehouse Pharmacies and Compounding Pharmacies. The initiative to instigate a “fee for service” culture is easily able to be taken up by Pharmacies located in Medical Centres.
After all, many Medical Centres now actually charge for appointments……….why should Pharmacies be left behind?
A Clinical Pharmacy adjacent a Medical Centre isn’t that unreasonable, is it?
Garry Boyd. September 2008.