University of Western Australia v Gray (No 20) [2008] FCA 498

UWA’s claim failed as there was no implied term in Dr Gray’s contract vesting invention rights in UWA, nor did the UWA’s regulations validly acquire such rights, absent express agreement. There was no duty of non-disclosure or to invent. UWA could not rely on its regulations for acquisition of property from academic staff. Dr Gray’s cross-claim for defamation and unjustified threats failed, as did UWA’s case. Sirtex succeeded against Dr Gray for breach of director's duties and misleading conduct in failing to disclose relevant risk to Sirtex concerning UWA’s potential claim; damages to be assessed.

Parties: Applicant; First Cross Respondent to First Cross Claim; Cross Respondent to Second Cross Claim: The University of Western Australia; First Respondent; First Cross Claimant; First Cross Respondent to Third Cross Claim: Bruce Nathaniel Gray; Second Respondent; Second Cross Claimant; Third Cross Claimant: Sirtex Medical Limited (ACN 078 166 122); Third Respondent; Second Cross Respondent to Third Cross Claim: Cancer Research Institute Incorporated (Registered Number 1001005); Second Cross Respondent to First Cross Claim: Yan Chen
Jurisdiction: Australia
Judgment Date: 17 April 2008
Procedural Posture: Intellectual Property, Employment, Cross Claims / Final Judgment at Trial
Outcome: UWA's application dismissed; cross-claims by Dr Gray and Sirtex dismissed save for Sirtex's cross-claim against Dr Gray for breach of director duty and misleading or deceptive conduct (standing over for damages assessment).
Legal Topics: Employee Inventions, University Intellectual Property Ownership, Implied Contractual Terms, Vesting of Patent Rights, Regulation Making Power, Unjustified Threats Under Patents Act, Misleading or Deceptive Conduct (s 52 Tpa), Fiduciary Duties, Qualified Privilege

Intellectual Property Contract Employment Law Delegated Legislation Trade Practices Corporations Defamation Employee Inventions +8 more

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Parties

The University of Western Australia

Applicant; First Cross Respondent to First Cross Claim; Cross Respondent to Second Cross Claim

Bruce Nathaniel Gray

First Respondent; First Cross Claimant; First Cross Respondent to Third Cross Claim

Sirtex Medical Limited (ACN 078 166 122)

Second Respondent; Second Cross Claimant; Third Cross Claimant

Cancer Research Institute Incorporated (Registered Number 1001005)

Third Respondent; Second Cross Respondent to Third Cross Claim

Yan Chen

Second Cross Respondent to First Cross Claim

Procedural Posture

Intellectual Property, Employment, Cross Claims / Final Judgment at Trial

Legal Issues

1 Whether the University had an implied contractual right to inventions made by Dr Gray during his employment
2 Whether UWA's regulations validly conferred intellectual property rights in inventions by staff on the University
3 Whether Dr Gray breached duties of contract or fiduciary duty to UWA

Ratio Decidendi

Court Disposition

UWA's application dismissed; cross-claims by Dr Gray and Sirtex dismissed save for Sirtex's cross-claim against Dr Gray for breach of director duty and misleading or deceptive conduct (standing over for damages assessment).

Orders

The application be dismissed.
The applicant pay the first and second respondents' costs of the application.