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
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
"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
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
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
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.