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State IP Guidelines Released: Unfettered IP Access Tempered?

The Department of Treasury and Finance has recently published version 1 of the Intellectual Property (IP) Guidelines for the Victorian Public Sector (Guidelines).

The Guidelines clarify the State’s IP Policy, providing a comprehensive framework and useful set of checklists and flowcharts to assist State government bodies in managing IP matters.

Given the push for consistency of approach across the whole of Victorian Government, the Guidelines should create certainty for businesses, grant recipients, not-for-profits and the general public when dealing with the State in matters involving IP.

The IP Policy and the need for the Guidelines

The Whole of Victorian Government Intellectual Property Policy Intent and Principles (IP Policy) was endorsed by Cabinet in August 2012. It provides the framework for the ownership and management of the State’s IP, as well as for the use by the State of IP belonging to others.

The key principles of the IP Policy are that the State:

  • “grants rights to its IP, as a public asset, in a manner that maximises its impact, value, accessibility and benefit consistent with the public interest; and

  • acquires or uses third party IP in a transparent and efficient way, while upholding the law and managing risk appropriately.”

The IP Policy sets out 12 core principles (IP Principles) relating to ownership and licensing, procurement, commercialisation, grants and funding, the use of third party IP and IP register requirements.

Whilst the aim of the IP Principles is laudable, a ‘one size fits all’ approach was largely taken, ‘clumping’ all forms of IP together with the most common form of State generated IP – that is, copyright.  As such, the breadth of the IP Principles is such that they are difficult to apply across the spectrum of IP types and situations.

For example, the IP Principles reflect a copyright-driven desire to grant unfettered public access to State IP, including IP Principle 2 which states that:

          "The State grants rights to its intellectual property with the fewest possible   restrictions".

To temper the breadth of the IP Principles, the Guidelines now offer guidance on what State IP should be made freely available and what should not.

What do the Guidelines say?

The Guidelines' focus is on seeking to ensure that IP is readily accessible to third parties to generate economic benefits and drive innovation in the broader Victorian community. To maximise the impact of the State's IP, releasing it to the public at large is usually to be preferred to granting rights to individuals or particular organisations. As such, release will often occur pursuant to a public Creative Commons licence.

That said, it is important to recognise that State owned IP is not automatically freely available to use. The State should be presumed to have reserved all of its rights in its IP, unless a CC licence appears on the applicable materials or a person has negotiated and obtained a direct licence from the State.

Agency assessment prior to release

In determining if and how IP is to be made available, each State agency is to assess the IP before it is licensed and consider some common sense questions, such as:

  • Who has developed the IP and in what capacity?
  • Does a third party have any ownership interest in the IP?
  • Has the IP already been licensed to a third party?

Restricted State IP

State agencies also need to consider whether access to the State IP should be restricted, including for reasons of:

  • Privacy;
  • Public Safety;
  • Security and law enforcement;
  • Public health;
  • Commercialisation; and
  • Compliance with the law.

The Guidelines clarify that access may be restricted to specific forms of State IP, such as the Victorian Coat of Arms, Victorian branding, trade marks and legislative and judicial material.

The Guidelines do not seek to be unnecessarily prescriptive and provide the flexibility for agencies to apply the Guidelines to the specific IP situation at hand.

In terms of commercialisation, the State's approach is that it does not create IP to generate a financial return. Accordingly, an agency may only commercialise IP if it has an explicit statutory function to do so or with the authority of the Treasurer where there is a clear net benefit to the Victorian community. As a result, the situation of an agency restricting access to IP on the basis of its potential for commercialisation is likely to be rare.

Conclusion

Overall, the IP Policy and recently issued Guidelines promote transparency and encourage agencies to take a common sense approach to IP matters, recognising that the mission of the State is not to generate valuable IP, yet that there may be other circumstances in which restricting access to IP is justified.

It is anticipated that the Guidelines will become the ‘go to’ document for internal government and external public and business queries regarding matters involving the State and IP.

For more information, the State IP Guidelines can be accessed here.

Jason Watson and Francis Nguyen

6 December 2013