The Royal Children's Hospital v Robert Alexander APO 94 (10 November 2011)
The decision arose as a result of a claim by The Royal Children's Hospital
(RCH) that it was entitled to two patent applications by Dr Robert Alexander
, as the employer of Dr Alexander
sought a direction from the Commissioner of Patents that both applications are to proceed in its name only.
Both applications relate to improvements in viral diagnostic methods and kits which may be used with a viral detection technique known as Rapid Enhanced Tissue Culture Immunofluoresence (RETCIF) the subject of an earlier innovation patent of which Dr Alexander was a co-inventor:
what Dr Alexander's
position was at The Royal Children's Hospital;
whether Dr Alexander
had a duty to invent
whether the inventions were created in the course of Dr Alexander's
the effect that the Royal Children's Hospital's IP policy had on ownership; and
whether the case was analogous to University of Western Australia v. Gray.
What was Dr Alexander's
position at The Royal Children's Hospital?
At the time the inventions described in both applications were made Dr Alexander was employed by the RCH as the Head of Virology.
primary role was to maintain the Virology/Tissue Culture and Molecular Diagnostics service, and was responsible for both the quality and efficiency of the viral diagnostic work undertaken.
The Hearing Officer found that Dr Alexander's
position in the management chain of the RCH
was not "...a position which might attract an additional 'duty of fidelity' to forward the interests of his
employer even if the position itself did not contain a duty to invent.
As a result, the key question was whether Dr Alexander's
position at the RCH
contained either an express or implied duty to invent, and in addition whether the inventions were created in the course of Dr Alexander's
Did Dr Alexander
have a duty to invent?
The Hearing Officer noted that one of Dr Alexander's
specific job requirements was to identify "potential areas for improvement in the diagnostic service".
It was however also noted that RCH
generally did not pursue substantial improvements to the RETCIF technique unless there was a clear motivation to do so.
With these considerations in mind the Hearing Officer held that Dr Alexander
had a duty to invent only "when there was a clear motivation which arose in the course of his
The Hearing Officer then considered two broad circumstances where Dr Alexander
would have been motivated to identify an improvement in the course of his
Where there was a recognised problem which he
would have been reasonably expected to resolve
Where he was otherwise motivated to pursue a particular avenue of research in the reasonable expectation of identifying potential improvements
Was each invention created in the course of Dr Alexander's
Recovery medium patent
The Hearing Officer opined that a skilled worker would recognise that media supplementation was a potential avenue of research where further improvements could be made, and that given Dr Alexander's
expertise, was an avenue of research that he
would be expected to further investigate with a reasonable expectation of identifying potential improvements.
The expectation of Dr Alexander to further investigate media supplementation with a reasonable expectation of identifying potential improvements was viewed by the Hearing Officer as providing "clear motivation to making the claimed improvement in the course of Dr Alexander's employment".
It was therefore held that the invention claimed in the application was made in the course of Dr Alexander's
employment, and was therefore owned by RCH
Diagnostic well patent
The Hearing Officer had regard to evidence before her
which suggested that the existing single well design was effective, and that "a substantial improvement was neither likely nor needed".
The Hearing Officer therefore held that the invention claimed was not made in the course of Dr Alexander's employment, because there was "no clear motivation for Dr Alexander to pursue this avenue of research in the reasonable expectation of identifying improvements".
What effect did The Royal Children's Hospital
's IP policy have on ownership?
initially argued that its IP
policy, which stated that IP generated by employees during the course of their employment is the property of RCH
, was imported into Dr Alexander's
On this basis RCH
contended that Dr Alexander's
contract contained an explicit provision for transferring rights in any invention from Dr Alexander
to the RCH.
1 In finding that the circumstances were not analogous, the Hearing Officer relied on differences between the "primary purpose" of Dr Alexander's research
and Dr Gray's research.
In contrast, the Hearing Officer noted that Dr Alexander's research on improving viral diagnostic techniques in use at the RCH would enable the RCH to better diagnose viral diseases, and on this basis is related to the primary purpose of the RCH and directly benefits the RCH and advances its interests.
Implications of the decision
Given the specific role and responsibilities of Dr Alexander
, including the particular requirements set out in his
job description to identify potential areas of improvement in diagnostic services, it is likely that this decision will be confined to its own facts.
lodged an appeal in the Federal Court from the Hearing Officer's decision on 1 December, 2011.