The University of Western Australia (’UWA’) v Gray [2009] FCAFC 116 case illustrates the practical significance of having an employee’s contract clearly define the scope of an employee’s duties in order to address the issue of intellectual property ownership (see here). The same case also sheds some light on the issue of inventive concept which is worthy of consideration.

Before Gray was appointed as the Professor of Surgery at the UWA, Gray was involved in the research for the targeted treatment of cancerous tumours in humans. His research continued during his employment at UWA. This research resulted in patent applications for the treatment of liver cancer. The UWA sought to obtain the rights to those applications on the basis that the invention or the ‘inventive concept’ was conceived during Gray’s employment at UWA. This required the identification of:

• the ‘inventive concept’; and

• the time of conception of the ‘inventive concept’

In order to identify what constituted the invention, it was important to identify what the invention or the ‘inventive concept’ was. When the Full Court considered UWA’s submission, the Full Court noted that UWA’s case on appeal was “fundamentally inconsistent” with the case made at trial.

At trial UWA, contended that the determination of the ‘inventive concept’ not only required a claim-by-claim analysis but an even more limited focus on the narrowest claim. At the time of trial, such an interpretation was most beneficial to UWA who had considered the more specific claims to embody the latest developments of the invention.

However, on appeal UWA contended that French J did not apply Polwood Pty Ltd v Foxworth Pty Ltd [2008] FCAFC 9, an Australian case addressing the issue of inventorship, because his Honour considered the claims rather than the specification as a whole. Regardless of the inconsistency, the Full Court held that the approach by French J was consistent with Polwood, which had discerned the ‘inventive concept’ from the body of the specification.

In order to identify the point at which the invention was conceived, UWA argued that the invention became complete once a person skilled in the art could perform the invention without further research and experimentation. UWA therefore submitted that the inventions were not complete until Gray’s appointment at UWA where he conducted further research and experimentation. French J rejected this reasoning and affirmed that the correct principle to apply is that the invention is complete once the inventor has arrived at the final, definitive idea or concept. This is distinct from verification or reduction to practice. The Full court approved the reasoning by French J and held that, depending on the facts of the case, verification or reduction to practice is outside the scope of inventive concept.

The Full Court’s findings illustrates that for an individual to be considered an inventor, they must have made a material contribution to the inventive concept which is generally more than a mere practical implementation of the invention, referred to as ‘verification or reduction to practice’. Where the invention consists of a combination of elements, it may be that several people contributed to that combination. Although not everyone who participates in a new development is necessarily an “inventor”, the inventors’ contributions to an invention do not have to be equal as the objective analysis is qualitative rather than quantitative. It is therefore important for patentees to be aware that when filing a patent application, the failure to identify a person who has made a material contribution to the invention, or the addition of an individual who has made no such contribution, is a ground for invalidity.

- Jacqueline Chelebian

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