9 things you should know about the draft VPS Intellectual Property Guidelines

The Intellectual Property Guidelines for the Victorian Public Sector have been published as a working draft.

The Guidelines will support the Whole of Victorian Government Intellectual Property Policy Intent and Principles (IP Policy), created in August 2012. The IP Policy sets out broad principles on the State's ownership and management of its intellectual property and its use of third party intellectual property. The Guidelines, provide guidance on the specific steps government agencies should take to comply with the IP Policy.

The IP Policy and the Guidelines apply to all departments and public bodies of the State. ‘Public body’ includes State business corporations and statutory authorities.

The draft Guidelines are a 'must read' for departments and agencies, who will need to implement the processes outlined. They also provide links to useful resources and an indication of when specific legal advice may be required.

Here are 9 things you should know about the Guidelines:

1. Many requirements of the Guidelines will only apply to 'significant' IP - for example, where the IP is particularly valuable or important to the operations of the agency.
2. The Guidelines will require agencies to manage their own IP and be responsible for implementing the IP Policy. (This is different to the previous position where requests to make use of State owned copyright material required the Attorney General’s approval.) Agencies will also need to actively foster compliance and awareness of the IP Policy and Guidelines.
3. The Guidelines acknowledge that agencies may have specific IP provisions in their establishing legislation. For example, the Transport Integration Act 2010 (Vic) empowers the Secretary of the Department of Transport to acquire, hold, licence, exploit or dispose of IP. Agencies need to consider the interaction between the IP Policy and these provisions.
4. The Guidelines set out specific recording and reporting requirements
1. Maintaining an intellectual property register recording information about any significant IP of the agency, including the creator, its identifying details, any IP registrations, the start and end date of the IP protection, relevant contracts and any important ownership and licensing details.
2. Reporting IP infringements to DTF, as the responsible agency. (The Guidelines contain materials on circumstances where it will be appropriate for an agency to enforce State IP rights, and a substantial section highlighting law relevant to use by the State of third party IP).
5. The Guidelines set out how to address IP in government contracts. Not sure where to start? For IP under procurement contracts, Chapter 5 of the Guidelines provides for a default position whereby:
1. each party retains ownership of its background IP;
2. the contractor grants the agency a licence over its background IP and third party IP to the extent needed for the agency to enjoy the full benefit of the agreement; and
3. the contractor owns the project IP developed but grants the agency a licence over the project IP to the extent necessary to achieve the procurement purposes.
6. The Guidelines encourage agencies to develop template procurement contracts to reflect the IP Policy. DTF is currently working with the Victorian Government Purchasing Board to ensure consistency between the IP Policy and the VGPB requirements. (Chapter 6 deals with these issues for IP under funding and grant agreements.)
7. There is a substantial section on licensing and public release of materials where the State owns the relevant IP. The preferred form of licence for State copyright material is a Creative Commons licence (Australian version). Specific guidance is provided on the selection and use of the various types of Creative Commons licences for new and existing materials..
8. The Guidelines address the commercial dimensions of IP where there has been little guidance in the past, including:
1. the factors to consider to value IP;
2. when a State agency can commercialise its IP through licence or sale (the IP Policy has imposed significant restrictions on commercialisation, including requirements for authorisations, and the application of the Cost Recovery Guidelines);
3. when a State agency should reassign or dispose of its IP and how to do this in an open, accountable and competitive manner.
9. There is a full chapter on moral rights, and practical guidance as to when the State should seek moral rights consents from its employees and contractors, together with a template consent form.

For more information about the IP Policy or the draft Guidelines, please contact:
Isabel Parsons
Special Counsel
t 9947 1405
isabel.parsons@vgso.vic.gov.au