Legal Comment by Mark Illidge

July 2007

The hinterland is teaming with creative and innovative people...perhaps you've invented something in your workplace.  So, who owns employee-produced inventions?

Following is a summary of the approach presently adopted by the Australian courts.

If an employer wishes to ensure that all inventions made by employees, that can be used for the benefit of the employer, are owned by the employer, then this needs to be expressly provided for in the employment contract.  Where an employment contract does not expressly provide for ownership of such inventions by the employer, then it is unlikely that employer ownership will be implied where any one of the following circumstances apply:

• The invention was created in the employees own time;
• The invention is not made pursuant to the direction of the employer;
• The invention is not the product of work that the employee was paid to do; or
• The inventive steps in creating the invention have been completed before involvement by the employer.

The courts are prepared to imply an obligation of good faith and fair dealing that would require an employer to recognise an employees rights in respect of intellectual property in appropriate circumstances.

The decision as to ownership of other forms of intellectual property rights such as copyright, designs, trademarks, circuit layouts and plant-breeders rights need to be separately considered when entering into employment contracts, as each are governed by a separate legal regime.

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