The employer is likely to be entitled to register the design if the design relates to something the employee is expected to do as part of their work duties.

However, if the employee’s duties do not involve suggesting or developing new designs, they are entitled to a design developed in their spare time – even if it relates to the employer’s business.

See Metroll Queensland Pty Ltd v Mark Nicholas Collymore, Courier Pete Pty Ltd [2008] ADO 9 which includes discussion on whether an employee’s normal duties included an expectation that they were involved in activities that might result in the creation of a design right. Employment contracts and position descriptions may be taken into account when trying to determine this. Also relevant is what evidence the employee may give as to how they came up with the design concept. For instance, did this occur whilst performing their role?

Company director authors a design in their own time

If a company director authors a design in their own time that is directly relevant to the business of the company, their obligations as a director may mean the design belongs to the company. (Metroll Queensland Pty Ltd v Mark Nicholas Collymore, Courier Pete Pty Ltd [2008] ADO 9; Spencer Industries v Collins [2003] FCA 542, 58 IPR 425).

Design application from an employee in their own name

An employee is normally not entitled to register in their own name a design they created at work. The employer is generally entitled to the design.

The question is whether the employee had the express consent of the employer to register the design in their own name. In particular, the employer’s failure to respond to requests for consent does not constitute consent. (Pancreas Technologies Pty Ltd v The State of Queensland acting through Queensland Health [2005] APO 1).

Design application from a former employee

These are cases where a former employee files design applications a few weeks or months after they leave a job. Their former employer believes that the employee authored those designs before leaving the job (in which case the designs would belong to the employer) but deliberately hid them. The person asserts that they created the designs after leaving the job.

Given the potential for evidence to be deleted/destroyed, these situations often depend heavily on circumstantial evidence.

Unclear employment arrangement

Ownership disputes may arise where there is doubt as to whether an employee/employer arrangement is ‘real’.

For example, the fact that prisoners received a weekly allowance from a prison authority did not mean that they were employees of the authority. (Eddie Kwan, John Pierre Le Sands and Paul N Van Draanen v The Queensland Corrective Services Commission and The Queensland Spastic Welfare League [1994] APO 53; (1994) AIPC 91-113; 31 IPR 25).

Multiple contributors to a design

Design created by a group of contributors

If all the contributors worked for the same employer, that employer was entitled to register the design. But if some worked for a different employer who was not named in the registration, the registered owner may not be entitled to the design.

Design authored by one person as part of a collaboration

Ownership of the design may be determined on the basis of the collaboration. In other words, if one person created the design in the sense that they actually drew it, but a team created the design in the sense that they collectively developed it, the team may be regarded as the design’s owner. (Commonwealth Scientific and Industrial Research Organisation et al [1995] APO 16; 31 IPR 67; (1995) AIPC 91-171).

Breach of confidentiality

If a design is disclosed in circumstances where implied confidentiality is breached, ownership of the design may be disputed. (Allen Hardware Products Pty Ltd v Tclip Pty Ltd [2008] ADO 8).