UWA v Gray anatomises universities and IP

So what should a staff member do where IP rights are concerned?

• Do not be enticed, bluffed or cajoled into signing any document assigning IP rights to the university or worse, to a third party
• Check the contract of employment. Does it clearly and explicitly require the staff member to create IP? What type of IP? Does it clearly and explicitly state that any IP rights so created will belong to the university?
• Do not accept any university statute, regulation or policy document on IP at face value. After UWA v Gray it may no longer be binding on staff members
• Ascertain if any IP rights or even concepts were created prior to employment at the university. If so, any claim by the university would probably fail
• If changing employment from one university to another, obtain a deed, letter or statement that the previous university employer vests any IP rights in the departing staff member
• Keep close records of funding from outside organisations and of contributions made by persons not employees of the university
• Do not accept that the university has the power to assign staff-created IP to third parties. The university cannot assign property it does not own
• Be wary of accepting any apportionment agreement. The university may have no IP rights to exploit unless these are assigned to it by the creator(s). Similarly the university may not have the power to enforce any apportionment policy it may have.

And as for third parties seeking to commercialise the IP creations of university staff:

• Make certain in any dealings with a university that it has indisputable rights to staff-created IP. It may not.