New WA Government Intellectual Property Policy focuses on responsible management and exploitation of IP assets

The Department of Jobs, Tourism, Science and Innovation recently released the "Western Australian Government Intellectual Property Policy 2023", which aims to cultivate the effective management of intellectual property (IP) rights created or owned by Government agencies in Western Australia.

What are the objectives of the Intellectual Property Policy?

The Policy's three key objectives are:

• to provide a framework to enable State government agencies to identify and ensure the protection of the various kinds of IP;
• where appropriate and commercially viable, to assist State agencies to identify commercial opportunities related to IP; and
• to ensure that adequate financial returns in respect of any commercialised IP are realised and reinvested into the WA community to foster further innovation.

Does the policy apply to your organisation?

The Policy applies to all those organisations captured by the definition of "public sector" in the Public Sector Management Act 1994 (WA) (the PSM Act). This definition includes all WA state agencies, ministerial offices and both SES and non-SES organisations (State agencies).

While those public bodies included in Schedule 1 of the PSM Act, such as WA Universities, the WA Police, government trading entities, and local and regional government are formally exempt from the Policy, such entities are nevertheless encouraged to consider adopting the Policy with specific regard to the creation, management, protection, and disposal of IP.

What must your organisation do?

State agencies are required to implement the Policy's position statements by introducing agency-specific IP policy and procedures with respect to:

• the ownership of IP;
• the management and protection of IP;
• the commercialisation of IP; and
• IP assignment, licensing and other forms of disposal.

In addition, State agencies have the option (but are not required) to implement the Policy's position statement in respect of employee recognition for IP creation, the appropriateness of which will depend on the specific agency.

Each State agency should also be:

Key measures

In many ways, the Policy reflects the understandable desire of the State Government to own the IP created by its employees and contractors while allowing State agencies the flexibility to handle and commercialise that IP in a way which best fits the particular circumstances.

That said, the Policy does contain some key measures designed to achieve the Policy's three key objectives.

Identification and protection

The starting point is that the State typically owns the rights to any IP created by its employees during the course of their employment and seeks to own IP created by its third-party contractors during the course of their contracted work.

Recognising that this usual position may not always be appropriate, the Policy requires State agencies to grapple at the contract formation stage with the issues of IP ownership and the State's access to that IP (in the event it will not own it).

State agencies must implement processes to identify, record and clarify ownership of IP - the most common form being an IP rights register. Contracts involving the creation or use of IP should be the subject of specialist legal advice to ensure that they are clear and unequivocal in respect of:

• the scope of relevant research and development;
• which IP rights are impacted;
• the resulting ownership, use and exploitation of the IP rights; and
• the duties owed to, and imposed upon the State, including in respect of maintaining confidentiality and compliance with other State agency laws and policies.

Commercialisation

Commercialisation refers to the process of generating commercial value in respect of products and services. To commercialise IP generally means to monetise the underlying value residing in the IP rights and includes any revenue generated from:

• an assignment or transfer of IP rights;
• a licensing of IP for use on an exclusive or non-exclusive basis;
• an arrangement in respect of the accrual of royalties or profits from the exploitation of IP; and
• a right of first refusal or other specific contractual terms in respect of the IP.

The Policy does not seek to be overly restrictive in the avenues by which State-owned IP may, in appropriate circumstances, be commercialised. Instead, it focuses on the obligations on the State agency properly to consider, consult and plan any such commercialisation, and to keep such records as may be necessary for any future internal or external audit of the decision-making process.

For example, State agencies should undertake commercialisation pre-assessments prior to entering into IP commercialisation agreements. The pre-assessment aids the State agency in determining whether the proposed commercialisation is appropriate, lawful, and financially viable. Appropriateness will turn on a number of factors, including any detriment to the State agency's functions, the agency's strategic priorities, and the potential return on investment.

Adequate financial returns and benefit sharing

As noted above, a significant focus of the State agency will need to be on ensuring that the commercialisation route chosen offers the best financial return for the State in the particular circumstances. The Policy recognises that, in many cases, this factor will mean partnering with third parties including, potentially, the creator of the relevant IP.

Importantly, the Policy makes clear that employees or contractors that create IP owned by the State have no automatic legal entitlements to share in the benefits arising from exploitation of that IP. However, the Policy encourages State agencies to consider and implement monetary and non-monetary benefit sharing arrangements between the State and third-party contractor or employee innovators and creators in appropriate circumstances.

Under the Policy, State agencies are free to develop their own agency-specific guidelines for the recognition and allocation of monetary and non-monetary rewards provided their guidelines are consistent with the Policy.

Such arrangements should be carefully considered, any potential conflicts addressed, and appropriately recorded to ensure any necessary approvals and legal requirements are met.