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This profile was last updated on 1/2/14  and contains information from public web pages.

Dr. Robert Alexander

Wrong Dr. Robert Alexander?

Performance Analyst

Local Address: Seattle, Washington, United States
Renton City Hall
 
Background

Employment History

6 Total References
Web References
Who owns the IP employees create :: Sparke Helmore
www.sparke.com.au, 6 Mar 2014 [cached]
Who owns a patent developed during a person's employment?  This was the question facing the Australian Patent Office in The Royal Children's Hospital v Robert Alexander.
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Dr Alexander was employed by the Royal Children's Hospital (RCH) as a Senior Scientist in the Virology Laboratory. During the course of his employment, Dr Alexander conceived two inventions and applied to have the inventions patented in his name. RCH disputed Dr Alexander's entitlement to the patents because of the employer-employee relationship, which it claimed meant that it owned the invention, and applied to have the application proceed in RCH's name.
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The key issue in this case was whether there is an implied term in Dr Alexander's employment contract that inventions developed by Dr Alexander in the course of his employment would belong to RCH.
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Dr Alexander did not obtain external funding for his research and was not pursuing individual research interests independent of those of his employer, and Dr Alexander's research was related to the primary purpose of the hospital and benefitted the hospital's interests.
Although there was no duty of confidentiality, normally an indication there is not an implied duty to invent, the Delegate noted that in this case the hospital's public interest role was served by disclosing and sharing new methods and techniques by making them publicly available. Accordingly, it was held that the lack of a duty of confidentiality did not remove an implied duty to invent in this situation.
This was enough for the Delegate to distinguish this case from UWA v Gray; however, the key issues of whether Dr Alexander had a "duty to invent" and the inventions were created in the course of his employment, had to be determined to answer the question of who owned the inventions.
Duty to invent
The Delegate noted that although there was no pure research conducted at RCH, Dr Alexander's role involved improving the clinical testing procedures at the hospital. This was held to be enough to result in a "duty to invent", although the duty was limited to the agreed purpose by reference to his job requirement, which in this case, was to identify potential areas of improvement.
The Delegate held that the inventions would have been invented in the course of Dr Alexander's employment, and therefore belong to RCH, if they were:
a solution to a recognised problem which Dr Alexander would have been reasonably expected to resolve, or a result of pursuing a particular avenue of research in the reasonable expectation of identifying potential improvements.
Assessing the Recovery Medium Invention against these criteria, the Delegate held that it was an extension of the work commenced by researchers in the RCH and it was an avenue of research which Dr Alexander would be expected to investigate further in the reasonable expectation of identifying potential improvements. Accordingly, it was held to have been invented in the course of Dr Alexander's employment and RCH was entitled to its ownership.
However, in the case of the Well Design Invention, the Delegate held that there was no clear motivation for Dr Alexander to pursue this avenue of research in the reasonable expectation of identifying improvements, and therefore it was not invented in the course of his employment, because:
Employer / Employee Ownership of IP – applying UWA v Gray | Freehills Patent Attorneys, Australia
www.freehillspatents.com, 10 Jan 2012 [cached]
The APO followed the UWA v Gray approach but in contrast to that case, the APO in RCH v Alexander found that:
as an employee of the Royal Children's Hospital (RCH), Dr Alexander had a duty to invent under certain circumstances, and one of the two relevant inventions was created in the course of employment and belonged to RCH.
The Royal Children's Hospital v Robert Alexander [2011] APO 94 (RCH v Alexander)
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In 2006 two provisional patent applications were filed in the name of Dr Alexander who commenced employment as the Head of Virology at RCH in 1996. The first (AP1) relates to a virus recovery medium that assists with improved detection of viruses. The second (AP2) relates to a device used for viral diagnostics.
RCH filed a request that AP1 and AP2 proceed in the name of RCH alone on the basis that the inventions were created in the course of Dr Alexander's employment with RCH and Dr Alexander had a duty to invent.
The APO held that RCH was solely entitled to AP1 as it was created in the course of Dr Alexander's employment, but that Dr Alexander was solely entitled to AP2.
Scope of employment
Dr Alexander's role included generally identifying potential for improvement to RCH's diagnostics techniques.
While the APO noted that Dr Alexander was expected to at least optimise the relevant methodology, it also noted that RCH only pursued improvements if there was a clear benefit to RCH in doing so and did not support Dr Alexander's research financially. This meant Dr Alexander's scope for identifying or making substantial improvements was limited.
Given the above, the APO held that Dr Alexander had a 'duty to invent' only where:
the problem was one he would ordinarily have been expected to resolve, or there was clear potential for improvement (but not where improvements were merely possible).
The APO determined that AP1 was the product of Dr Alexander's efforts to optimise the existing RCH viral diagnostic techniques. AP2, however, was not an improvement that was directly needed for RCH's purposes and there was no clear motivation for Dr Alexander to undertake this line of research.
Analogies to UWA v Gray
Dr Alexander argued that the circumstances in RCH v Alexander were analogous to those in UWA v Gray. The APO, however, pointed to differences between the two cases which led it to decide at least partly in favour of RCH.
The APO noted that Dr Alexander:
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This issue was raised in RCH v Alexander although the APO determined that the lack of an obligation of confidentiality on Dr Alexander did not negate the duty to invent given that in the opinion of the APO (as noted above), RCH did not need to commercialise the invention to benefit from it.
In UWA v Gray there was also discussion around the nature of UWA as a public education organisation. The Full Federal Court drew a distinction between the nature of universities and of private sector entities, and discussed how this distinction impacted on confidentiality and fiduciary obligations between employees and employers in each such circumstance.
In RCH v Alexander the APO appears to have extended the UWA v Gray distinction between public and private entities to hospitals.
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The decision in RCH v Alexander obviously does not go into such detail so it is unclear the extent to which the APO may apply this distinction to other types of organisations.
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1. The Royal Children's Hospital v Robert Alexander [2011] APO 94 at 47
Microbiology : Contact Microbiology
www.rch.org.au, 17 July 2009 [cached]
Senior Scientist: Robert Alexander Lab Contact: 9345 5850
Patentology: Shades of Gray as Dispute Over Invention Ownership Goes Viral
blog.patentology.com.au, 20 Nov 2011 [cached]
The Royal Children's Hospital v Robert Alexander[2011] APO 94 (10 November 2011)
Entitlement - employer/employee relationship - whether employee had a 'duty to invent' - whether inventions made 'in the course of employment' - whether patent applications should proceed in the name of the employer or employee
Electron micrograph of the bird flu virus In a tale of two pending patent applications filed by the sole named inventor Dr Robert Alexander, one has been found rightfully to belong to his employer, The Royal Children's Hospital (RCH), while he will be allowed to keep the other for himself, according to a Hearing Officer (Delegate Karen Ayres) in the Australian Patent Office.
As in the leading decision of the Full Federal Court in University of Western Australia v Gray [2009] FCAFC 116, ownership was resolved by considering whether Dr Alexander had a 'duty to invent' the subject matter of each application under any express or implied terms of his employment contract with RCH.
At the relevant times, Dr Alexander was Head of Virology at RCH where his primary role was to maintain the Virology/Tissue Culture and Molecular Diagnostics service, which conducts viral diagnostic work on upwards of 10,000 clinical samples at the hospital each year. The Delegate found that in this role it was one of his duties to improve the viral diagnostic techniques used at the hospital, so as to enable the hospital to better diagnose viral diseases. However, he was not required, or expected, to conduct extensive (and, perhaps, expensive) research into possible modifications to equipment used in diagnosis, particularly where there had been no substantial issues identified with the effectiveness of the existing equipment.
As a result, the Delegate has directed that Dr Alexander's patent application for an invention related to improvements in diagnostic techniques should proceed in the name of RCH, while a second application covering modifications to a microtitre assembly tray used in the testing process should remain in Dr Alexander's name.
THE DISPUTE During his time working for RCH (and its predecessor, the Women's & Children's Health Network), Dr Alexander filed two patent applications.
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RCH contended that the inventions disclosed in both applications had been made in the course of Dr Alexander's employment, and therefore rightly belonged to the employer. Dr Alexander claimed that his position was similar to that of Dr Gray in the University of Western Australia ('UWA') case, in that he had no 'duty to invent' in the normal course of his employment, and therefore - as in Dr Gray's case - the inventions and application were rightfully his own.
RCH sought a direction under section 32 of the Patents Act 1990 that the applications should proceed in its name, as well as a declaration under section 36 that RCH, and not Dr Alexander, is the sole entitled party to the grant of a patent in each case.
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While Dr Alexander had some discretion with his line of research, his research was still focused on improving the viral diagnostic techniques used at the hospital. Since this would enable the hospital to better diagnose viral diseases, Dr Alexander's research was related to the primary purpose of the hospital and his work therefore directly benefitted his employer and advanced their interests.
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However, the 'well design' invention of the '481 application was found by the Delegate not to have been made in the normal course of Dr Alexander's duties, and therefore not to be the property of RCH, her reasoning being (at [66]-[67]):
There was no evidence that the existing device was in need of routine trouble-shooting. Rather the evidence suggests that the existing design was effective and a substantial improvement was neither likely nor needed. There was therefore no clear motivation for Dr Alexander to pursue this avenue of research in the reasonable expectation of identifying improvements.
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While this is an expensive option, if the RCH's example of over 10,000 clinical samples per year is typical, there is potential for the invention of the '051 application to be quite valuable, and so an appeal by Dr Alexander may not be out of the question.
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However, a loss of rights to Dr Alexander by RCH in this case could certainly be problematic for the hospital, precisely because the invention was made by Dr Alexander for use in the normal day-to-day activities of the Virology/Tissue Culture and Molecular Diagnostics service.
As for Dr Alexander's 'lack of confidentiality' argument, the freedom to share or 'give away' an invention, which is all that the lack of any duty of confidence implies in and of itself, clearly does not equate to a right to acquire proprietary rights in the invention for oneself. Where the invention was developed by the employee in the normal course of conducting core activities of the employer - and indeed is now in daily use by the employer - it would be absurd if the employee could subsequently obtain proprietary rights and thereafter demand payment of royalties, or even prevent the employer (or former employer) from continuing to use the invention.
We note that the '051 application is currently under examination, and that one of the objections that has been raised in a first examination report is that all claims lack an inventive step. The reasoning given by the Delegate, in paragraphs [61]-[64], for finding the invention to be the property of RCH is also strongly suggestive of obviousness in view of certain earlier publications by Dr Alexander, particularly under the current Patent Office application of an 'obvious to try' test (see Australian Patent Office Embraces "Obvious to Try"). It may therefore make little difference who owns the application, and if RCH does not have the resources or inclination to dispute the objections, it may simply let the application lapse.
And, while Dr Alexander has retained ownership of the '481 application, this is also probably of little consequence.
Employment contracts
www.becklegal.com.au, 26 May 2013 [cached]
A recent decision in the case of the Royal Children's Hospital v Robert Alexander [2011] 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.
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