The Australian Government creates, owns, and uses a substantial amount of intellectual property (IP) through its various activities including science, health, education, defence, public infrastructure, information technology, and the arts. It is necessary for government agencies to be aware of how IP is created and by whom, whether it should be formally registered as a right of the Government, and ensures that the management of the IP is efficient and lawful. Simply, good governance requires that the IP government creates, is protected and managed in accordance with a detailed IP management plan devised within each government entity.
IP is the legal rights associated with the intellectual activity in the industrial, scientific, literary and artistic fields. IP protects the expressions of the mind. It refers to the intangible assets that are created as a result of the intellectual efforts of individuals. Intellectual property rights come in many different forms including:
Other forms of IP include trade secrets, confidential information, domain names, circuit layouts, plant breeder’s rights, geographical indications and privacy.
To fully optimise the benefits of IP assets, it is critical for government agencies to ensure that its IP is properly protected in order to commercialise the IP asset, defend against infringers, assign, licence and sell the IP. The registration of IP rights (if possible) is critical to ensure the proper ownership and control over the IP asset and avoid infringement risks. A detailed IP management plan also ensures that the use of any IP is properly controlled.
Further, it is also necessary to have appropriate mechanisms in place to ensure that any use of third-party IP does not infringe the rights afforded to the owner or licensee of that IP.
Australia has seen its fair share of IP disputes. There have been disputes involving some big names and celebrities, including Katy Perry, Kylie Minogue v Kylie Jenner, Adidas three-stripe trade mark, Burger King v Hungry Jacks, UGG boots, and our now infamous Apple v Samsung patent disputes which took over seven years to settle in 2018.
Trade marks and patents are becoming very valuable business tools and create significant commercial value for a business or organisation using these forms of IP. More recently, the High Court judgment of Aristocrat Technologies Australia Pty Ltd v Commissioner of Patents  HCA 29 looked at whether a claimed invention that utilises computer software or hardware will be patentable under the Australian Patents Act. The Australian High Court rarely decides IP disputes. The judgement was split 3:3. Patentees of inventions involving the use of computer software or hardware should now review their patent rights, which could now be vulnerable to a registrability attack.
Some years ago, the Commonwealth Government released the Intellectual Property Principles for Australian Government Entities (Statement of IP Principles) to assist government agencies in dealing with and managing their IP.
The Statement of IP Principles is made up of 15 principles which address the following issues:
For a more in-depth discussion about these IP Principles, watch our on-demand webinar on Managing IP in the Australian Government here.
In accordance with the Statement of IP Principles, Commonwealth entities are required to establish an IP framework which should:
An IP framework will usually consist of an IP policy which sets out the purpose of managing IP, an implementation plan and mechanisms to review and evaluate the IP policy.
An IP policy is a formal statement produced by a Commonwealth entity that outlines its approach to managing its IP such that it aligns with the Statement of IP Principles.
To create an IP policy, an entity must first research and understand the IP principles and the general requirements for managing IP throughout its lifecycle. Entities must draft a policy to align with their core functions and identify all the types of IP generated, acquired, used or being dealt with while executing its core function. The draft IP policy should address the following issues:
The IP policy should be supported with an appropriate IP implementation plan which sets out how the IP policy will be put into effect on a practical and operational level. Government entities should consider the following when preparing an IP implementation plan:
The IP policy and its implementation, which make up the IP Framework, should be subject to regular periodic reviews to ensure it aligns with the objectives of the entity, improves on any deficiencies and continually grows its effectiveness in managing its IP.
As noted above, an IP policy implemented by an entity should include provisions which require an entity to maintain appropriate systems for the identification and recording of IP to enable entities to:
IP may be created from the majority of activities performed by an entity. This may include the development of patentable inventions, trade marks and copyright which subsists in materials such as software, documents, emails and letters. Therefore, it is impractical for an entity to identify and record all IP created and should have a cost-efficient mechanism to identify and manage only the IP which warrants management. In general, the IP that warrants management is IP that are:
Failure of an entity to properly record and manage the IP it creates or uses may result in the following:
Holding Redlich can assist government agencies with regard to its compliance with the Statement of IP Principles by providing advice on the drafting of an IP policy, assisting with the protection of its IP rights (including any filings for trade marks, patents and designs), preparing and reviewing IP agreements, management of IP portfolios and enforcement IP rights where necessary. Click here to see how we can help.
If you have any questions, please contact us below or send us your enquiry here.
Authors: Blair Beven & Simon Balales
The information in this article is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this article is accurate at the date it is received or that it will continue to be accurate in the future.