Education

Video transcript

Prof Julie White

On behalf of Queensland Health, I would like to welcome  everybody here in Brisbane at Customs House and also online. I believe we  actually have really quite a substantial online presence as well. So, welcome  to the Fireside chat on Inventorship and Intellectual Property protection with  our very special guest, Professor Robert French.

Prof Julie White

The event is brought to you by the National Foundation for  Medical Research and Innovation, known as NFMRI, and being hosted by us at  Queensland Health. For those who don't know me, I suspect most of you do, my  name is Julie White. I'm the Executive Director at the Office of Research  Innovation in Queensland Health, and I would obviously like to start by  respectfully acknowledging the traditional owners, the Turrbal and Yuggera  people on the land in which this event is taking place today.

Prof Julie White

I pay my respects to their Elders past, present and  emerging. So, the Office of Research and Innovation, ORI, as we are  affectionately known, is running these series of seminars and they’re designed  primarily for Queensland Health research is to really strengthen awareness of  the key issues that are facing researchers and also to increase innovation  across the state's health and medical ecosystem.

Prof Julie White

ORI is responsible for matching Queensland health research  capabilities in hospitals, universities, research institutes and businesses  with partners translating that research into improved health outcomes for  patients. Because that's exactly the business we are in. We are delivering  health outcomes to our patients. So, the thing that ORI is doing differently  this time around is we are embarking on protecting our own intellectual  property.

Prof Julie White

We are looking to actually unlock the value and the assets  that we have developed over many years. So, it's really important that our  researchers actually feel as if they are empowered to be entrepreneurs and to  be innovative. And to that end, we are actively supporting, we've got a team  around us in ORI to help protect the intellectual property that is being  developed.

Prof Julie White

And we're also embarking on incentivising and rewarding our  clinician researchers to indeed be innovative. Because if we are not going to  innovate, we will not be sustainable. We have to innovate in order to be able  to keep the health service, the machinery moving. So, before I just quickly  introduce our distinguished guests, I just think we should also make sure that  we know that we actually have been really rather successful.

Prof Julie White

In 1970, Professor John Pearn was awarded the first-ever  Florey Fellowship at the Royal Society in the UK for research into experimental  pathology. In 1972, Professor John Kerr, head of UQ's Department of Pathology,  published a landmark discovery on apoptosis. And UQ’s Professor Frazer and Dr  Jian Zhou, who obviously filed the very famous patent that became known as  Gardasil.

Prof Julie White

And further, in 1996, Brisbane born, and UK educated Professor  Peter Doherty obviously won that Nobel Prize for medicine in his discoveries  for cells protecting viruses. So, all that means is actually Queensland is home  to some really world class leading health and medical research and technologies  and discoveries. We need to ensure that Queensland Health is protecting the  assets we put our hard work into.

Prof Julie White

So, tonight's seminar, a Fireside chat on Inventorship and  IP will explore the concepts around discovery and innovation. Who's an  inventor? What happens if you get things wrong? What happens if you can do to  support intellectual property? As I said, I think we've got probably 100 people  in the room, even more online. So, thank you so much for attending.

Prof Julie White

My particular thanks go to Professor Robert French for  making the time to come here tonight to share your valuable insights on  intellectual property. Professor French is the Chancellor of the University of  Western Australia and former Chief Justice of the High Court of Australia. I  will now hand over to Noel Chambers, CEO of National Foundation for Medical  Research and Innovation, to begin the discussion with Professor French.

Prof Julie White

Thank you. Thanks, everybody.

Dr Noel Chambers

Thanks, Julie. And thanks, Robert, for, doing this again  with me. We did it for two months ago in Perth. In a law firm over there. So,  we've had a rehearsal. So hopefully, here we go. I guess one of the questions  people ask is, well, why is anyone interested in patents?

Dr Noel Chambers

I mean, we're a Foundation. We're a Medical Research Foundation.  For us, it's about delivering benefits to the community. That's our end goal.  And we look at the structure or the pathways to get there. So, for us what we  support is pre-clinical research. But the way it's delivered to the community  for what we support is drugs, devices, diagnostics, vaccines, biologicals and  tools, regulated products.

Dr Noel Chambers

So, if we’re gonna get our research to the community through  products, we need to have investors, big pharma, biotech and others investing  coming to support that research so we can navigate the pathway to get through  the regulated products and get it to the people in need. Now, intellectual  property, of course, is a key component of getting things all the way through  and attracting what we call next-step patents.

Dr Noel Chambers

So, intellectual property is critical to us, and we consider  the studies and how IP is being managed even in our expressions of interest  stage. So, if IP is not being managed well, your project applications will fail  immediately. We fail things on the weakest link. We compound that by having a  little process. So, it's not only what we spend, but it's how it is spent.

Dr Noel Chambers

With a rough rule to say you can't spend the money in your  own lab and you can't spend in your own university, your institution. So, we're  researchers are currently trying to say when they apply for grants, what can I  do? What can I do? What can I do? For us that doesn't work. It's what is needed  and who should do it.

Dr Noel Chambers

So, we consider regulatory systems not accreditation, data  utility, GMP and all that along with IP. So, IP is critical for anyone to be  successful with us. And IP is critical really to take our research for the type  of research we fund to get it to the community in need. That's what we're  about. And I'd like to thank Robert for spending his time to help us get some  of these messages across, because we see particular challenges in understanding  IP at the university sector and whether you're an inventor or not, particularly  when you're having to collaborate and partner with external partners.

Dr Noel Chambers

And if you've got the Inventorship wrong, it causes all  sorts of challenges and problems down the track. But why don’t I hand it over  to Robert then, and he can probably start off by chatting a bit more about Intellectual  Property more generally.

Prof Robert French

Thank you very much, Noel, it's very nice to be here back in  Queensland. And I gather that there are quite a few regional Queenslanders  participating online.

When I was present at the National Native Title Tribunal  back in the 1990s, I spent a good deal of time in that part of the world, right  up to and including the Torres Strait. And there's a there are a lot of  vibrant, vibrant communities there. So, we're talking about Intellectual Property,  and that's a generic term. And the question is what does it cover?

Prof Robert French

And I think it's important for people to understand without  getting into too much technicality. Just what's the broad legal framework which  identifies and defines what we call Intellectual Property? And for our  purposes, it's really a product of laws of the Commonwealth Parliament. Okay, so  you have, patents for inventions and that's they’re created by, a Patents Act  of 1990.

Prof Robert French

You have a copyright and there's a Copyright Act and then  other Commonwealth law. So, the author of an original work, and they have all  sorts of things which are original works, has the legal right called copyright.  In that work you have trademarks which can be registered. And again, if you  develop a trademark and it's not already in existence, then you can have the  legal rights to that trademark.

Prof Robert French

And similarly with designs, and then, there are circuit  layouts and plant variety rights and a whole array of different things. But  they're all the products of Commonwealth laws. And when we talk about patents  and copyrights and so forth, it falls into that class of rights which we call  personal property rights, that say that the owner has them as personal  property, which is just a way of distinguishing from real property, which is  and things like land and so forth.

Prof Robert French

That has an implication for, what can be, who can, how they  those personal property rights can be affected by somebody other than the  person who owns them. You can, of course, sell a personal property, right? You  can assign it; you can give somebody a share in it. And the patent, say, is  capable of encompassing all of that kind of arrangement.

Prof Robert French

You can give somebody a share in the profits of its use. And  this arises perhaps in the context of, universities. Importantly, another  university or any other state-based institution can buy a rule or regulation of  the university, take away that personal property. Right. Because it's a matter  of Commonwealth law. A state law can, adversely impact in or operate  inconsistently with the common law.

Prof Robert French

But of course, if you're working in a university, you may  have a provision in your contract of employment which says, what you develop is  something that we share or we own or, we have a right to commercialise. So,  there's a whole variety of legal arrangements that may be made through  contracts of employment or otherwise. They might also be made in collaboration.

Prof Robert French

You're an inventor. You want to exploit the invention. You  want to get it out there into the marketplace. And you enter into a  collaboration with somebody. It might be an institution like a university. It  might be a state government institution. It might be something else. It might  be a private investor. And you may then have arrangements about how the  ownership of your property will be held and how the benefits derived from its  exploitation, will be shared.

Prof Robert French

So, we're talking about rights created by Commonwealth law.  And I've spoken generally in terms of patents, copyright, trademarks, and  designs. Now, what I come to focus on, what is the area of interest this  evening and that is that is patents, of course. And they are patents for  inventions. So, the first question that one asks is what's an invention?

Prof Robert French

Now in Australia, we have a very old-fashioned definition of  invention in our Patents Act. It goes back to a 17th century statute in the  United Kingdom. It's a manner of new manufacture. Now, if you look at what does  that mean? You can't parse the words and come up with a crystal-clear meaning,  as you would normally expect from a statute.

Prof Robert French

So, what it means is what's been developed by its  explanation over many years by the courts, in Australia, almost like a, what I  call a common law process where the judges deciding from case to case what a  manner of new manufacture means. A core concept of invention and manner of new  manufacturers. It has to be something which is made by human action.

Prof Robert French

May be a device. It may be a process of some sort. It may be  a method of doing something, but it has to be something which is made. That was  important in a case we decided in the High Court when I was Chief Justice  D'Arcy and Myriad Genetics. And the question in that case was whether you could  claim as an invention an isolated nucleic acid segment which contained, markers  for susceptibility to breast cancer.

Prof Robert French

So, basically, Myriad Genetics had assembled a database from  various patients which showed what were the markers, the mutations in a DNA  sequence, which would indicate that, there was a susceptibility for, to breast  cancer. And then they claimed in a patent, not just the mode of diagnosis, the  method of diagnosis, but the actual shape, any segment of a DNA molecule which  contained those polymorphisms from anybody.

Prof Robert French

And we said in the High Court, you can't patent that. That's  not an invention because it's not something made. It's just information which  has been derived from a particular patient that was always there. So, an  invention has to be something, something made. So, something more than  discovery is what you're saying. A discovery is not an invention on its own.

Dr Noel Chambers

So, something more than discovery is what you're saying. A  discovery is not an invention on its own.

Prof Robert French

No, a discovery of existing information is not. That's  right. Having an idea is not an invention. So an idea is not an invention. And  doing what I might call the grunt work in a laboratory, being told to, you  know, create some sort of, mechanism, of itself doesn't constitute  participation in the inventive process.

Prof Robert French

If you're a technician, for example, who's doing what  somebody else has asked you to do, who's actually got the concept and trying to  develop it, we need to have, such and such a, an instrument in order to do  something.

Dr Noel Chambers

So, we get applications in where someone's discovered a  potential drug target, but then they're going to outsource it to another group  who's going to do the medicinal chemistry and the manufacturing, the working  out of what are you going to use it for?

Dr Noel Chambers

But then the IP is being handed away is a rejection

Prof Robert French

Yeah well, a reduction of the practice itself isn't the  invention. But just to step back a moment before we get to that, we've talked  about what an invention is. Of course, it's got to be novel. Hasn't has it's  not an invention if somebody’s already thought of it and published their  thoughts.

Prof Robert French

And it's not going to be obvious. The whole point of  invention is it's not obvious. And this, we often get into arguments in the Court  about whether a thing is obvious or not, whether there's a, the inventive leap  is involved. And how do we test whether something's obvious, whether you look  at what's been published before and you ask, is in the state of knowledge that  we had before, would this have been obvious to a skilled but unimaginative  person working in the field?

Prof Robert French

So, the judge has to imagine a skilled but unimaginative  person with a PhD who would say, this is obvious. Okay, it's what I call one of  them the great menagerie of imaginary friends that judges call upon, like the  reasonable person and the skill. But an imaginative worker, who looks at what's  already been published says, oh, yeah, that's that, that's plain as a black  stuff.

Prof Robert French

So then, you have to be, novel has not been published, and  it has to be, not, has to be involved and inventive step. So, you then ask,  well, who's the inventor? Now this is where it can get complicated. Who's the  inventor? Well, before I ask who is the inventor, there is one other thing I  should point I should make.

Prof Robert French

There are different kinds of inventive process. Some of them  are the wonderful moment where you find that, rotating a magnet inside a coil  of wires generates an electric current. Okay. And so that's electricity and,  turbines and things. So that's, a discrete development. On the other hand, you  may have something which involves a trial-and-error process.

Prof Robert French

When I was a practitioner back in Perth, I remember one of  the things we had to deal with was I was representing somebody who had developed  a hospital bed. This was before you could just press a button, and they talked  any way you wanted to involve cranks and levers and I learned all about things  like the Trendelenburg position, and the reverse Trendelenburg position.

Prof Robert French

These are the way hospital beds tilt. But the interesting  thing was that the pattern was based upon an extensive and extended trial and  error process to get things right. So, it's not always a light bulb moment. And  sometimes it can be that you finally work out. This is the way it works. And  that is something which has not been thought of before, is not novel, but did  involve a lot of little steps to get there.

Prof Robert French

Another one which was quite, and has many implications for  the sort of thing you are interested in, was a case, I sat on as a federal  court judge, a University of Western Australia and Gray, and that case involved  the development of treatments for liver cancer. Right. And the essential idea  of the treatment was that you would get little micro spheres made of some  ceramic, rather, and inject them, into the hepatic artery, you know, such a way  that they would deliver a therapy to a tumour in the liver.

Prof Robert French

Now, there were three kinds of microspheres. There was one  that would be coated with a chemotherapeutic agent. The idea was to treat it so  a direct to the end of the hepatic artery. So, it would release the  chemotherapeutic agent in the vicinity of the tumour. Another one was,  radioactive Yttrium 30 or 31, which had a short half-life.

Prof Robert French

And you inject that and so you get highly localised  radiotherapy. And the third one, which is my favourite, was a magnetic  microsphere. And you would send that into the hepatic artery to the liver. And  then you would stick the patient in a rotating magnetic field which would,  which would be a bit scary for the patient. But the idea was that would have  the effect of heating up the little microspheres in the tumour.

Prof Robert French

And if you get the tumour off three degrees above,  surrounding tissue, you can kill off. And even if it's less than that. But this  was a 20-year process, and it was a lot of it was trial and error, getting the  size of the microspheres and their mode of distribution just right. So, they  got to where they were meant to go and didn't go off and wreak havoc in other  parts of the body.

Prof Robert French

And it was a very complicated and iterative process and  involved, a history of differing collaborations, grants for fans here and there  and all over the place. And when I was writing the judgment, I was sitting in a  room with, I think probably 100 volumes of just funding applications. I asked  NHMRC grants and sponsorship, which actually gave me a measure of the stage of  the idea at various points in the development and the point at which one might  say that what you call the inventive concept had crystallized.

Prof Robert French

And it's when the inventive concept is crystallized that an  invention has come into existence. And then the question also, who was  responsible for the inventive concept? And that's the question you ask when you  ask who is the inventor? And it might not be just one person.

Dr Noel Chambers

So, there's a bit of a different culture possibly here, traditionally  and I've even seen it recently with, with some people in academia, you do your  research and you're putting up a publication and lots of names can go on the  publication, and it doesn't necessarily have the same impact as when you're  putting in at least two inventors on a patent.

Prof Robert French

Yeah.

Dr Noel Chambers

If you include all those names, you might be doing yourself,  creating a problem.

Prof Robert French

Well, one of the names might be somebody who just,  supervised the team without an input.

Dr Noel Chambers

Head of the Department.

Prof Robert French

And this is not unusual. But the act itself doesn't tell us  what an inventor is, but the accepted definition is seems to be the person or  one of the persons.

Prof Robert French

Any person is an inventor. Is the person or one of the persons  who materially contributed to the inventive concept as defined in the  specification and the some of the claims. Now I've used that term specification  and claims. So, when you launch a patent application, you set out in a patent  the specification which describes, if you like the invention in a very, general  terms.

Prof Robert French

And then there are specific claims which have to be fairly  based on that specification. I'm claiming, an invention, for this and that. And  the other thing, there might be 3 or 4 different claims associated with a  particular specification, I think in the, myriad genetics thing, for example,  you had a claim for the isolated nucleic acid, which we struck out, but they  might have been I can't remember precisely, but it might have been then a claim  for a diagnostic method by reference to the identification of those  polymorphisms and so forth in the DNA.

Prof Robert French

So, you have specific claims, and the invention resides in  the claims, which have to be fairly based on the specification.

Dr Noel Chambers

So, keeping a register then of who contributed to the  different claims early on would obviously help.

Prof Robert French

Well, one of the one of the arguments in the case I had in  the Gray case was there was somebody who said I had my orange, and I should  have been recognized as a contributor to the inventive concept.

Prof Robert French

I was not satisfied that that was the case. That person  wasn't entitled. But it can be a very messy lineage.

Dr Noel Chambers

If you've left someone off or you've put someone on, it's both good and bad for  you.

Prof Robert French

Yeah. And that's particularly the case where you have  collaborations. Of course, these days we are seeing more and more  multidisciplinary things happening, especially in the medical field.

Prof Robert French

I was in London a couple of weeks ago at a dinner, organised  by friends of UWA and UK and Europe. And the guest speaker was a very  impressive, research ophthalmologist, Professor Lyndon da Cruz. And essentially  what he's been doing is the growing of using stem cells to grow retinal cells  for, transplant into the eyes of patients who suffer macular degeneration,  which is a, you know, have been pretty hard to treat, but they're talking about  very, very fine, small distances less than a millimetre.

Prof Robert French

So, they had to use robotic engineering, and they had to use  AI to, get a database, of the blood vessel patterns in retinas. And so, it had  to be a collaboration between the medics from one university and the engineers  from another who developed this, robotic system driven by AI, who are delighted  to find. Now, the question is, how would you identify the inventions which  emerge out of that?

Prof Robert French

And how would you identify who the inventors are? I suspect  there's a host of patents involved, but you need some pretty good advice about,  about where they reside.

Dr Noel Chambers

Maybe I can throw a couple of old ones to you, Robert. I  mean, you've heard them before. So, I've gone to a restaurant with a friend,  and we've sat down, and we've actually come up with a plan, and we've drawn the  whole thing up on the back of a napkin.

Dr Noel Chambers

All right. We've done this great design of this restaurant,  and I've gone into the lab the next day to a student and say, can you just do  this exact experiment as written, as done, follow these plans. He's the  student, then an inventor. Are they doing reduction of practice? And when did  the invention occur?

Prof Robert French

Oh, now you're asking for legal advice, which I don’t.

Dr Noel Chambers

Hypothetical.

Prof Robert French

Yeah. Oh, I can't imagine anything drawn on the back of an  envelope after a few drinks that would. However, let's imagine, an ideal case  in which you've got a, a robust, serviette. And you actually, you actually draw  a device on it, let's say a device for sticking on your nose and hearing your  apnoea for the first time.

Prof Robert French

Okay. You say somebody made one of those. Yeah. Okay. You've  got all the specifications for the device.

Dr Noel Chambers

And dated and timed on the napkin.

Prof Robert French

Well, whatever. Yeah. And you just say that somebody else,  manufacture that for me. Well, the person who manufactures what you have  designed is not thereby the inventor.

Dr Noel Chambers

Yeah. So that's very relevant.

Dr Noel Chambers

If you take it into a laboratory situation at a university  where you might have supervisors designing experiments and putting things in  place, and then who contributes? And particularly if it's a student, because  students in university contracts often own their own IP, but they really  reduction of practice in some cases. Or are they inventors? And I think it's a  bit more of a complex thing on a case-by-case basis.

Prof Robert French

I think that's right. You can't, draw bright lines here because  the student might go away and say, yeah, that's great, but I've just thought of  a better way of doing it, or a modification of this design, which makes it work  even better. And then you have somebody, perhaps you have somebody who's made  what we call a material contribution to the invention.

Dr Noel Chambers

Yes.

Prof Robert French

As distinct from somebody who's just put it together. Yeah.  On your instruction.

Dr Noel Chambers

And I love to throw around a little other hypotheticals  here. I mean, I think most of us in the room are old enough to, If I mentioned  how, you know, computers now and all that sort of stuff, you know,

Prof Robert French

Yes, they haven't seen 2000.

Dr Noel Chambers

They haven't seen to this, yet. But now we've got patents  around. Alexa, Siri and Google. I mean, are they novel? How does that work?

Prof Robert French

I have no idea.

Dr Noel Chambers

You have no idea, that’s a good answer.

Prof Robert French

The interesting thing that I didn't notice that there was a  question whether, an AI which has a neural learning network and produces  something, can be an inventor and a single judge of the federal court back in  2021. I think it was Justice Beech, said yes.

Prof Robert French

And the Commissioner of Patents then appealed against that  decision to the full Court of the Federal Court, which sat five, because it was  an important question. And they decided, no, that the concept of inventor, as  set out in the Patents Act and the relevant regulations, is a natural person.  Now, that does not mean that you couldn't change the law to say that, you  couldn't confer legal personality on an AI and then say ownership this.

Prof Robert French

But then the question is, who gets the benefit of it?  Because the AI isn’t going around selling its interest, presumably would be the  owner of the AI system. And I think, in fact, the doctor who had or the  inventor who had developed this AI system and then tried to argue that the AI  was the inventor, but because he owned the AI, he took the benefit of the  invention.

Prof Robert French

So that was the way. But it depended, the root of his  argument was that the AI was the inventor. And the court said no. The High  Court refused special leave to appeal, but it didn't finally knock out the  possibility because it said the facts weren't. The facts weren't right. The  situation wasn't such that you could answer all the relevant questions.

Dr Noel Chambers

Okay, maybe I'll break some. So, reach out to something  which we didn't discuss too much in Perth. Swiss style claims. So, this refers  to repurposing a drug, that might be on the market for a particular condition.  And you're trying to, you know, file patents to use it for a different  condition. So, the manufacturing part of the patents are often owned by  somebody else early on.

Dr Noel Chambers

But now you're trying to develop a new IP position in the way  to regulatory pathways. But do you want?

Prof Robert French

Yes, I think we, said something about that when I was on the  High Court in a case called Apotex, which was about, using, a drug for a new  purpose, which was the treatment of, psoriasis.

Prof Robert French

And I think we said that was patentable. And we also said in  that decision that a method of medical treatment was patentable, which had not  been which had been, in some contention before that time. Now some countries  expressly exclude methods of medical treatment as patentable. But that's,  that's but that doesn't mean that the way that a doctor does something to a  particular patient is thereby patentable or is an invention.

Prof Robert French

So, there's a fine distinction to be made. And I think some  more working out to be done there, but certainly a new, application of an  existing, pharmaceutical product may be patentable.

Dr Noel Chambers

Okay. Well, maybe what we'll do is soon, we got some people  in the room is, see if we can get them involved somehow. Does anybody have any  questions?

Dr Noel Chambers

Obviously not for me, but for Robert. Relating to Inventorship  in particular? I mean, inventorship is, obviously important to us as a  foundation to delivering benefits to the community. But you're in the room, so  it's obviously important to you. Here we go down the front. So, I don't know  your name, but please, I think if in this way for the mikes, we’re streaming  it, they won't hear it in Cairns.

Melissa Hagan

Oh. Hello, everyone. I'm Melissa Hagan, and I'm the director  of the Queensland Clinical Trials Coordination Unit within ORI. And I've  wondered always about if you are classified as an inventor, and it's a personal  right given to you and you haven't worked out, it might be in collaboration. If  you die, does that right, then automatically go to your estate or how do you  work through all that?

Melissa Hagan

You know because I see that as a really complicated thing.  And often things, you know, do take some time to commercialise.

Prof Robert French

Well, I think specifically the Patents Act in section 15  provides for ownership of the patent to be, in the, a patent can be granted to  the person who invented or a person to whom they've been assigned the rights  or, the legal representative of a deceased person who might be the inventor or  a person.

Prof Robert French

So, it's like a piece of personal property. It was kind of  mentioned before if you don't mind. Always the tricky question of, a person who  invents something when they're an employee of somebody, which obviously is  important in relation to universities. It's important in relation to, say,  clinical researchers within the Department of Health and so forth.

Prof Robert French

So ordinarily, if an ordinary employer, employee, in a  business, develops something in the course of the business, which has, there's  an implied term that the property belongs to the business as a matter of  implied contract and instead of the employment contract. So, it's not  inconsistent with the Commonwealth law. It's just saying your contractual  relationship is such that if you do this on company time, it belongs to the  company.

Prof Robert French

And of course, ordinarily that's particularly so if you have  a duty to invent. In other words, if you were employed to try and develop  something and you do and, and so it's written into the contract or it's  necessarily implied in the contract, but different with universities. And this rose  again, in the Gray case, there was nothing expressed in the contract of  employment.

Prof Robert French

The question was is there an implied term. And what I held,  and it was upheld on appeal was that the relationship between academics and  universities is different from a regular employer/employee relationship. And a  long story short, there is no implied term. In other words, if the university  wants to have the intellectual property, it has to write that into the into the  contract.

Prof Robert French

Now, it's like most sensible universities, I would think if  they don't do that, they would at least create a framework which encourages,  the academic to take advantage of the universities’ facilities for commercialisation  and so forth. And I think a lot of universities now have policies in that  regard. And even if you have an iron clad, contractual assignment to a  university or any other employee, you might still have an argument about who  was the inventor, and at what stage an inventive concept crystallized.

Prof Robert French

If you've got an invention which takes many years, like the Gray  thing, 20 years, where the academic or the employee, if it's an even if you not  an academic, has worked for different institutions, then at what point did the  inventive concept come down? Who is he working, he or she working for at that  time? So, you can often get a messy lineage so you're better off to be  cooperative rather than adversarial.

Dr Noel Chambers

It's also easier to do a deal with one party than others.

Dr Noel Chambers

So, try to get the parties sorted out before you get the  next partner involved. That's my advice. Yeah. The other thing on that front,  by the way, just quickly from personal experience, is if the inventors don't  have some skin in the game, some benefit, the tech transfer is actually so much  harder and a lot of investors will walk away because there's nothing in it for  the original inventors, because you want them involved.

Dr Noel Chambers

It's easier. Yeah. We're going to other questions for  Robert. We've been very quiet, but it's unusual. Yes, please.

Dr Noel Chambers

There's a microphone here. Yeah. Jenny's got one for you.

Isabella Allen

Thanks. I'm Isabella. I'm from Matter Research. And my  question is, so if you're a student and you've come up with the idea, you've  invented, you've made the innovation, but you're going for a grant. And as part  of that, the university says that you assign away your intellectual property to  them.

Isabella Allen

Does that mean that they've then become the inventor, or do  you, retain your, idea, your intellectual property still?

Prof Robert French

Yeah. If you go into a collaboration, or, you're the  recipient of a grant, and it's a condition of the grant that you assign the  intellectual, that you assign any intellectual property that you might develop.

Prof Robert French

And that's like any contractual assignment of the property. Usually,  it's not as clear cut as that. The sensible university will want to incentivise,  the person involved to, you know, develop an invention and to have as Noel just  said some skin in the game, so that there'd be a sharing arrangement. We've  just finalised, I think in UWA a revised IP policy and one of the issues was  this issue about, students who get involved in the development of, of  inventions.

Dr Noel Chambers

Keeping an early log I think coming back is my experience  helps answer some of those questions for those potential future investors. So,  if you keep an idea of what the claims might be and you say who contributed  when and you have dates and people on time, then it's much easier to hold those  arguments.

Dr Noel Chambers

Yeah. Because you've got to go back to the filing dates of  the patent in terms of priority, particularly if you're competing against US  patents. So, there's a whole heap of challenges there of knowing when the  invention occurred and having your logbooks properly kept. If you're not  keeping proper logbooks down the track, it even gets harder. Maybe you can  comment to this.

Prof Robert French

Absolutely. Yeah. In the Gray case again it's the question  was who did what when. And that depends very much upon laboratory notes as well  as upon what was disclosed in successive grant applications because each grant  application had to set out where they got to at the point, that their  application was being made and why they needed something more.

Prof Robert French

So, yeah. So, the wavefront of the development was reflected  in the, the paper records.

Dr Noel Chambers

From my end, I mean, I've never actually also taken a  technology forward where all the data's come out of a single institution. Some  of the data has come from one institution to another to another, and all of it  piles up to actually give you trust in the data.

Dr Noel Chambers

If you read the aims and papers of any reproducible results.  So, you put all that together. If you don't have the logbooks, if you don't  have that data managed, it just chases away those next two partners. They  don't. They walk away very quickly. Anyway, we got another question over here,  Norbert.

Norbert Kienzle

Hello. Thank you for these great insights.

Norbert Kienzle

My name is Norbert Kienzle, I’m from IMB, UQ. I’m an  inventor on a patent or a couple of them. What are my rights or gravitas to  actually that these patents, continue to be prosecuted? Obviously, it's quite  expensive, to run this year over year. And, what if it's decided we stopped  that?

Prof Robert French

So, you you've got a patent now?

Norbert Kienzle

I'm the co-inventor. Yeah.

Dr Noel Chambers

So, I think the university in your case probably owns your patents,  Norbert?

Norbert Kienzle

Alright, so, it's a private company.

Dr Noel Chambers

It's a private company. Okay.

Prof Robert French

Okay. And so, somebody you're somebody who's acquired your  patents, but they're not using it?

Norbert Kienzle

No, I mean, I don't know. I mean, obviously it takes money  to keep that patent alive for the 20 years. What if the company decides that  they don't want to, continue that?

Prof Robert French

Well, if you've assigned the patent to them, then that might  be the end of it. Unfortunately.

Prof Robert French

And of course, we have had the phenomenon. I think, maybe in  the United States, somebody brings out a new piece of tech that threatens, an  established technology. And so, the, the company that has a, a vested interest  in maintaining the established technology acquires the patent and freezes it  off. Now, I know there are there are some there's some competition law  implications around all that.

Prof Robert French

But I'm not clear that you can, force them to, unless you  write it into your contract. Of course, you could write it in the contract that  if you haven't done something within, you know, six months or haven't spent X  number of dollars, the patent reverts to me. The way to protect yourself is to  protect yourself upfront.

Dr Noel Chambers

Put it in the original agreements with reversion clauses is  what I try to do. And I'm on the other side of the fence, remember? So, if we  don't progress with it, it will revert back. But IP is the asset and often  licensing isn't enough for some companies. They actually want to have it  assigned. So, thinking upfront, it's like putting in a termination clause or  anything in any contract.

Dr Noel Chambers

Think of what could go wrong. You're the lawyer, I am the  business guy.

Dr Noel Chambers

Look at the other end.

Natasha Korica

Yeah. Sorry. Natasha Korica from the ARM hub. I wanted to go  into a little more detail about recordkeeping. So, when someone's come to you  with a new invention and they want to prove that they are the inventor of this  particular patent, you've touched a little bit about logbooks, but can you go  into more detail about what really adequate recordkeeping actually looks like  and what for example, logbook entry might look like to really prove that  someone's been genuinely involved.

Natasha Korica

So, what would be a substantial record that you could look  at and go, that person was certainly involved in something like this. And what  does that?

Dr Noel Chambers

Well, for my experience, small being, an investor type  person, I'd probably have a different vision to what would legally stand up in  court. So, I might let Robert answer that question in the first place.

Prof Robert French

Well, I doubt there's a single formula, to answer that, that  that question. Let's take the case of the microspheres that I was talking  about, and memory dims a bit because that was back in 2000 and 2006 or 2007.  But, one would see records of, experiments that were carried out using  different size.

Prof Robert French

So, we tried, you know, 35, microns or whatever. And this  happened, then we tried another size and that happened, and then we tried  another size, and that went right. So that you can track over a period of time  what's been done and by whom. And now there are many different ways in which  that might be recorded.

Prof Robert French

It might be recorded, you know, electronically. It might be  recorded in handwritten lab books. I imagine these days will all be on an iPad.  So the and the extent of the, the, it always be a matter of, I suppose if it  becomes to a contest for a court to decide whether that is sufficient to,  demonstrate, the point at which the inventive concept crystallizes and who is  the who is the person who's made or who are the people who have made a material  contribution?

Prof Robert French

So, it's a record of what's been done and by whom. And then  you can imagine that broad formula covers a whole range of possible ways of,  of, of recording, which will depend upon the nature. And of course, once you  get into a, a complex interdisciplinary exercise like the one I mentioned in  London, then the record keeping becomes quite a, quite a massive and  complicated task, but that it's very important that the thought out carefully,  it's part of a collaborative process.

Prof Robert French

If you want to protect the IP.

Dr Noel Chambers

Electronic notebook keeping obviously makes a bit easier.  But I mean, you need to keep I mean, if you I'm a medicinal chemist, was, a  long time ago. So, keeping NMR and mass spect data, making sure it's signed,  make sure it's dated, making sure it's kept in line.

Dr Noel Chambers

And I think the thing that Robert also pointed out that  people forget, it's also the experiments that fail, all right, which are also  important in helping you make a decision. Right. It's not just the ones that  work.

Jonas Hjertquist

Hello, my name is Jonas from Bar Weiss. Just got a quick  question. Thank you, first of all, for being here today. I've got a quick  question in regard to and this is at the risk of sounding not very parochial, are  there major differences between countries in the way that patent laws applied?

Prof Robert French

Yeah, I mean, the central concepts are pretty much the same.

Prof Robert French

And you've got a really an international network of, you  know, registration, patent protection. Anybody with a significant patent will  seek protection all around the world. But there are, some differences in  important areas. For example, some countries will exclude, as I mentioned  earlier, methods of medical treatment from the, from patentability. And I  suspect we may see some differential developments in the area of, AI and the  involvement of AI and the development of inventions.

Prof Robert French

So, and I think, there have been some differences of view  around the world in relation to, patentability of genetic sequences. So that  would be manufactured genetic sequences, I guess. So, there are there are  differences. I mean, there's a general comment and there are different  formulae. We've got we hang on to this old formula from the, the UK of hundreds  of years ago, the manner of new manufacture and the reason we hang on to it, I  suspect, is because there's so much law on it now.

Prof Robert French

It's like, an old machine in which you've got such heavy  sunk costs. It'll cost you an arm and a leg to actually crank up to something  new. But a lot of other countries use more, understandable language when they  describe what an invention is. But eventually the concepts are pretty much the  same. You can get some differences.

Prof Robert French

Murray Genetics case that I mentioned, we said that both, an  isolated DNA, nucleic acid segment obtained naturally from a patient, and, say  DNA, which is a sort of manufactured thing. But with this, with the particular  patient's information that both of those, neither of those just patentable  because they both depended upon information for the inventive claim rather than  something made.

Prof Robert French

Now, the US Supreme Court went, said that the natural DNA  was not patentable, but that the cDNA was and that was a different they went  off a different base between things which are unnatural and things which were  invented and so forth, rather than doing the information analysis that we did. So,  you can get differences around the world, but there's a lot of commonalities.

Aaron Davies

Hi. Aaron Davies from the Office of Research and Innovation.  From a novice inventor perspective, what are some common things that can trip  people up, that can go wrong, that can either cause issue a lot of issues down  the track legally or, make something unpatentable, apart from what's already  been discussed prior.

Prof Robert French

What things can affect you? You're right. Yeah. Okay. Well,  I guess, this is prior disclosure. If you've effectively published before, you  have applied for your patent. Then the prior publication becomes part of the  prior art, which makes, means that a claimed invention is not novel. Having  regard to the prior art, this generates a very interesting tension between open  access science, and the protection affected by IP.

Prof Robert French

And it may be that there's a policy question there as to how  much, we should allow, open access without prejudicing IP rights. But in any  event, that's one area. And then there's, I think there's a specific reference  to secret use as another vitiate, factor in relation to, in relation to  inventions.

Prof Robert French

So, they're the principal thing is if, if what we're talking  about is an invention in the within and otherwise within the meaning of within  the meaning of the act. Things can go wrong. Of course, if, you don't realize  what your rights are and that you've sort of signed them away without  understanding what you've signed away.

Prof Robert French

And there are hazards for inventors who try to get out the  line with some private investor or financier. And I've seen, a fair bit of that  in the years past in practice, that everything's rosy at first, then the  finances imperatives take over, the inventor feels marginalized, and they get  into a horrible argument, and then everybody ends up in court and nobody makes  money.

Prof Robert French

Sometimes. The best advice for an inventor, who, a person  who's in the line of research they want to see that they're in the marketplace  is simply to sell the invention, or whether it's, the price I sell. I mean that  in a generic sense. Sell it. Whether it's to a private investor or to the  university or to some other institution, and get on, take a slice of the  action, if that can be arranged, and then get on with making the next  invention.

Prof Robert French

Some people are much better at inventing than they are at  business. And I think the case I do remember was in my early years in practice  and one of my partners was acting for and was a fellow who had fallen out with  his financier, that it was a was an invention which was a bit questionable. It  was an invention for, scooping up a chicken.

Prof Robert French

Pork from a chicken. Pens, commercial chicken pens. But it  turned out it had a problem. It would only work on dry chicken poop. He fell  out with a financier.

Dr Noel Chambers

So, only good in Victoria 3 or 4 times a day. Yeah. So, are  there any other questions for Robert at the moment? We got one over the back.

Dr Noel Chambers

Sorry. We've got one down the front here. So, you missed  your hand up before? Yeah.

Another person

Question for Robert. I've heard it said that the patent is  only as good as your ability to defend it. And, I mean, that puts a lot of  people off. And the costs for most people are prohibitive. You know, going from  personal experience as a clinical scientist, I run into this a couple of times.  So, there's things out there that I've lost out on severely.

Prof Robert French

Yeah, that's absolutely right. So, you have a patent, and  you're on your own, and somebody just goes off and is doing the thing that's  covered by the patent, and you want to bring in infringement action. Well,  commencing legal proceedings is always expensive, and particularly in this area.

Prof Robert French

And the classic response to an infringement action is a  counterclaim for the challenging the validity of the patent on a range of  grounds. You know that it was, not novel, that it was obvious that the claims  are not fairly based on the specification and a whole array of things. So,  certainly better off, being allied with somebody who's got the muscle to defend  the, to defend the patent.

Dr Noel Chambers

Yeah. So, my first question when I go into, any institution  or anywhere and look at patents, generally is they try to give you some  valuation, is it litigation ready? Because it almost never is. And that changes  the valuation very quickly. But from the foundations point of view, we wrote to  the board, actually wrote to every university in Australia and said, if you  don't have a well-supported business development transfer office, whatever you  want to call it, that's going to support your researches, tell them not to  apply, because if we don't have those teams around you to support the  researchers and let the researchers be researchers.

Dr Noel Chambers

Then the chances of having that research translate to a  benefit just drops off. The risk goes up enormously. So, you need to have those  teams around you.

Prof Robert French

Now there's another there's another wrinkle I should  mention, and this is really for the institutions, for the universities and the  government departments or the, if you've got a patent, which looks good, you  license it off to somebody, say they're in the US to develop it, and then that  somebody, who your licensee, brings you the infringement action because  somebody is infringing and they challenge the validity of the patent.

Prof Robert French

Now, what happens if that patent is found invalid? You've  granted a license over an invalid patent. So, the institution needs to protect  itself against the possibility of, kickback against the institution. We paid  you for a pet, which turned out to be invalid. We want compensation. Yes. So  that's a that's another area.

Dr Noel Chambers

Yep. Over the back.

Bayode Ero-Phillips

Thank you. Question for Robert. My name is by Bayode Ero-Phillips  from Griffith Enterprise, the technology transfer office at Griffith  University. My question is around, enshrining employment protection for  employees within the Patents Act like they have in countries in Germany, like  Germany and the UK.

Prof Robert French

In other words, you think, you're asking me whether I think  it's a good idea to have a provision in the Patents Act, which confers rights  on employee inventors.

Bayode Ero-Phillips

So, the example from Germany is not so within their statute.  It's clearly written there that employers need to share, the rewards of  inventions that created by their employees, they need to share them with  employees.

Prof Robert French

Yeah, well, that gets us into a policy, debate. And, you  know, I don't have any, in principle difficulty with that.

Prof Robert French

The, I one would have to ask, does that provide any,  disincentive to institutions in relation to how they how they engage with their  employees? I suspect not, I think with copyright in the US, they have, maybe  statutory shop rights, as they call it, not exclusive use rights for employees.  I, I can't quite recall now, that, it's certainly the reverse Under our  Copyright Act, if an employee, if an employee generates copyright, the  copyright belongs to the..

Dr Noel Chambers

Oh, yeah. No. Oh, sorry. Oh.

Prof Robert French

So, it's a, a policy suggestion. And. Yeah, you have debates  on whether it's a good idea or a bad. I personally, I don't think it's a bad  idea. Just depends on…

Dr Noel Chambers

I don't think it's a bad idea either.

Dr Noel Chambers

But it is one example where I who I am, it's institution.  But I was asked to help an institution take the technology up to now with  venture capital firms. And the first one I went to, which I knew that wouldn't  invest, said, do you still have a policy where the researchers have no rights?  And they said, yes.

Dr Noel Chambers

And they said, well, you know, we will not invest. We will  not invest unless the researchers have some skin in the game, because it's more  than just tech transfer on paper. And that was happening without a legislative  requirement. And I think Julie's going to come and take over. I think our  time's up, Robert.

Prof Julie White

Thank you very much indeed, Professor Robert French and Noel  Chambers.

Prof Julie White

Thank you for sharing your insights. We very much hope that  you've actually got some really good, useful insight to Inventorship and Intellectual  Property. And hopefully, most importantly, we've actually given some of a very  talented Queensland health clinician researchers, some guidance as well. I'd  also like to have a special shout out to Qlicksmart, inventor of sharps, safety  products that are sold to over 50 countries in the world and the winner of the  International Health Exporter of the year award. So, thank you very much  indeed.