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Founded in 1983, Lofstrand Labs has been dedicated to providing the highest quality research support to scientists around the world. We are proud to provide the broadest range of molecular biological services available from one company. Lofstrand Labs, a FEE... more.
Robert Alexander Laboratory Manager and Department Head, Molecular Probes email@example.com
Robert Alexander joined Lofstrand Labs in 1983 and is the most senior staff member with over thirty years with the company. Prior to joining Lofstrand, Bob worked with Dr. Smith as a senior research assistant performing molecular studies on the etiology of human cancer. Bob received a B.S. in Biology from the University of Maryland, and serves as Laboratory Manager, Radiation Safety Officer and Head of the Molecular Probes Department. Mr. Alexander retired from Lofstrand Labs in 2015. Bob is also co-inventor of the Lofstrand Bactolift.
Laboratory Manager Robert Alexander joined Lofstrand Labs in 1983 and is the most senior staff member with over twenty years with the company. Prior to joining Lofstrand, Bob worked with Dr. Smith as a senior research assistant performing molecular studies on the etiology of human cancer. Bob received a B.S. in Biology from the University of Maryland, and serves as Laboratory Manager, Radiation Safety Officer and Head of the Molecular Probes Department. Mr. Alexander worked together with other staff members at Lofstrand Labs in developing the In Situ Hybridization capability now offered by the company. Bob is also co-inventor of the Lofstrand Bactolift.
A recent decision in the case of the Royal Children's Hospital v Robert Alexander  APO 94 explored the issue of employees developing intellectual property within the workplace and whether ownership of the invention made by the employee is to be treated as being developed in the course of the employee's employment, and therefore deemed to be owned by the employer.
In this case two provisional patent applications were filed in the name of Dr Alexander who was engaged by the hospital as the head of virology. The first application (AP1) related to a virus recovery medium that assisted with the improved detection of viruses. The second patent application (AP2) related to a device used for viral diagnostics. The hospital sought to intervene by filing a request that both AP1 and AP2 be filed in the name of the hospital alone on the basis that the inventions were created in the course of Dr Alexander's employment with RCH (the Hospital), arguing that Dr Alexander had a duty to invent within the scope of his duties and responsibilities with the Hospital. The Australian Patent Office (APO) decided that AP1 was created in the course of Dr Alexander's employment, as the improvements made were within the scope of Dr Alexander's employment duties. However, conversely AP2 was found not to be an improvement that was directly needed for the hospital's purposes and was outside the scope of Dr Alexander's employment duties. The result being that the hospital was solely entitled to AP1 but not AP2. The justification for the APO's decision, in finding that AP2 was the creation of Dr Alexander in which ownership belonged to Dr Alexander was that there was no clear motivation for Dr Alexander to pursue this avenue of research in the reasonable expectation of identifying improvements within the scope of his employment duties. In addition the problem in which he developed a solution for was not one in which he was expected to resolve. This decision was reached by the APO notwithstanding that the hospital produced evidence that the Hospital maintained a company policy which stated that intellectual property generated by employees during the course of their employment was the property of the hospital, which formed part of the terms and conditions as contained in Dr Alexander's employment, and that therefore this was a mute point. However, it was later conceded by both parties to this decision that this policy did not assist the Hospital, in seeking to claim ownership of AP2 because it was already successfully argued by Dr Alexander that AP2 was developed outside the course of his employment. This decision highlights that it is critical for employers to ensure that when executing employment contracts that the scope, duty and responsibilities of the employee is clearly defined to capture any innovations and improvements which may be developed by employees when carrying out the course of their employment. In these circumstances had the hospital not so narrowly defined the scope of Dr Alexander's employment, so as to include a duty to invent, innovate and improve existing hospital technologies then it is likely that the hospital would have been successful in claiming ownership in both provisional patents.
Although of limited value as an authority (and may still be the subject of an appeal), the Australian Patent Office decision in The Royal Children's Hospital v Robert Alexander  APO 94 offers one of the first examinations of the Gray decision.
The APO considered an application from RCH under sections 32 and 36 of the Patents Act 1990 (Cth), seeking a direction that two patent applications should proceed in the name of RCH, as opposed to that of its employee, Dr Alexander. By way of brief background, Dr Alexander commenced employment with the Women's Children's Health Network in 1996, and his employment was transferred to RCH in 2004 when W&CH was split into two separate entities (one of which being RCH). Throughout, Dr Alexander was employed as a Senior Scientist, and at RCH was specifically in charge of the Virology Laboratory. Dr Alexander accepted that the inventions claimed in the two disputed applications were conceived during the time he was employed by RCH, and RCH also accepted that Dr Alexander was the sole inventor of the applications. The only issue which the parties could not agree on was whether Dr Alexander made those inventions in the course of his employment with RCH, where there was an express and/or implied condition of his contract that transferred the rights to the inventions to RCH. In its decision, the APO considered whether Dr Alexander held a senior managerial position which might attract an additional "duty of fidelity" to forward the interests of his employer, even if the position itself did not specifically contain a "duty to invent". Despite being engaged as a Senior Scientist and holding the position of 'Head of Virology', it was held that in reality Dr Alexander's was not a senior role given the extensive reporting chain above him. In contrast, Dr Alexander was not expected to (and did not) obtain external funding, and whilst he had some discretion in selecting his research, Dr Alexander's research was related to the primary purpose of the hospital and would directly benefit RCH. However, the issue remained of whether Dr Alexander had a duty to invent and created his inventions in the course of his employment at RCH. Dr Alexander sought to rely on Gray where the court held that if the employee was not engaged to use his inventive capacity at all or was only engaged to do so when specifically asked or for an agreed purpose, the employer would have no rights to the employee's invention, except where it resulted from a specific task requested by the employer or was to effect the agreed purpose. The APO noted that Dr Alexander's job specification included a requirement to identify "potential areas for improvement in the diagnostic service", as well as a broad responsibility as Head of Virology to ensure that the diagnostic techniques used at the hospital were as effective as possible. From this, the APO found that prima facie, there was a duty to invent and an agreed purpose but this was limited to circumstances where there was a clear motivation which arose in the course of his employment: "In that context, the specific job requirement to identify 'potential areas of improvement' seems to be limited to improvements which clearly have potential rather than encompassing original research where an invention might possibly result." Two broad circumstances were set out in which Dr Alexander would be clearly motivated to identify an improvement in the course of his employment: where there was a recognised problem which he would have reasonably be expected to resolve; and where he was otherwise motivated to pursue a particular avenue of research in the reasonable expectation of identifying potential improvements. Applying these circumstances to the two inventions concerned, the APO found that one was the product of "an avenue of research which Dr Alexander would be expected to investigate further in the reasonable expectation of identifying potential improvements", and was therefore conceived in course of Dr Alexander's employment. However, the second invention related to a potential improvement to a device where the existing design was effective and a substantial improvement was neither likely or needed. As a result, there was no clear motivation for Dr Alexander to pursue this avenue of research in the reasonable expectation of identifying improvements, and the invention was therefore not created during the course of his employment and belonged to Dr Alexander. That said, the APO decision in RCH v Alexander does indicate that nothing is black and white, that factual circumstances will be taken into account, and that even the seemingly decisive ruling in Gray is itself not without a touch of grey.
Senior Scientist: Robert Alexander
Lab Contact: 9345 5850