The American shop rights doctrine and the inventions of Australian employees

摘要

Innovative employees provide insights and creative energies that can drive corporate prosperity. However, innovative employees can soon become cunning competitors when they leave their employer. The shop right provides American employers with a restricted licence to use an employee's invention if it was reduced to practice with the employer's resources and knowledge. However, the Americans have been imprecise in defining the doctrinal basis of the shop right, with equity and fairness, equitable estoppel or implied licence having been held as valid doctrinal bases in the Supreme Court. Shop rights have not arisen in Australian cases such as University of Western Australia v Gray (2009) 179 FCR 346. This article analyses the doctrinal basis of the shop right, whether a pseudo shop right could be founded on existing Australian intellectual property law and, if so, the implications that would have had on selected Australian cases.