The Royal Children's Hospital v Robert Alexander 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  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.
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
During his time working for RCH (and its predecessor, the Women's & Children's Health Network), Dr Alexander filed two patent applications.
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.
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
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.
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.
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
reasoning being (at -):
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.
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.
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 -, 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.