Licence enforcement

• Published in: Journal of intellectual property law & practice 2012-03, Vol.7 (3), p.176-179
• Main Author: Wagner, James J. D.
• Format: Article
• Language: English
• ISSN: 1747-1532; 1747-1540
• DOI: 10.1093/jiplp/jpr212

Dr David B Cox is a Partner with Jackson McDonald Lawyers, Perth, Australia. He previously worked in the biomedical research industry. This article examines patent entitlement and invention assignment in light of the recent University of Western Australia v Gray and The Leland Stanford Junior University v Roche Molecular Systems cases. While the Gray case found that the employment contract of academic employees has special features that prevent the implication of a term vesting ownership of inventions in the employer, those features may have general application, meaning that employers should no long rely upon the implied term to ensure title to inventions. The Roche case, though decided on the basis of settled contractual and patent law principles, establishes that the Bayh-Dole Act does not vest ownership of inventions created with federal funding in the employer, nor does it disrupt those settled principles. Employers should ensure that express vesting clauses in employment contracts are operative as at the creation of any invention.