In Richwood Creek Pty Ltd v Williams  FCA 196 the Federal Court has reversed a decision of the Patent Office to uphold a patent opposition. The opposition was decided on the ground that the patent applicant alone was not entitled to the grant of a patent.
Spender J disagreed that one of the inventors’ rights in the invention vested in his employer. In reaching the decision that the inventor’s (Mr Williams’) invention was not the property of his employer, Spender J was influenced by the inconsistent and insufficient evidence before the Office, for example, there was no written employment contract between Mr Williams and the (alleged) employer. Further, it was significant that the employer did not assert its rights to the invention during the opposition, and Mr Williams did not contest the appeal of the Office’s decision.
Spender J stated that:
“Employers’ rights in the inventions of employees are not governed by statute but by common law and equitable principles which clearly show that in the absence of any express contractual obligation there is no rule that an invention made by an employee is inevitably the property of the employer. It is instead necessary to determine whether the employment relationship suggests that the invention concerned was made in the course of employment or, in other words, whether it is something it was the employee’s job to invent.”
In this case, there was not enough information for the Court to find that the employment relationship suggested the invention was made in the course of Mr Williams’ employment.
The decision re-iterates the importance of ensuring employment contracts specify who is to own an employee’s inventions. This issue has of course also been highlighted recently by the well publicised Federal Court decisions in University of Western Australia v Gray.