IP in Government Contracts Under the Whole of Victorian Government Intellectual Property Policy What is IP? • IP may apply to intellectual activity and creations. • To foster innovation, the law provides some creators with certain exclusive rights over their creations, for a certain amount of time. • Includes copyright, patents, trade marks, designs, circuit layouts and plant breeder’s rights. How might IP issues arise in contracts? Type of contract 1. Procurement of goods 2. Procurement of services 3. Procurement of software 4. Consultancy services 5. Provision of grant IP related deliverables 1. Designs, inventions, parts, specifications 2. Reports, inventions, websites, brands 3. Software code, manuals, specifics, data 4. Training packages, discussion papers, reports 5. Reports, research, inventions, client data IP in contracts WoVG IP Policy • Endorsed by Government in August 2012. • Policy Intent: • • State grants rights to its IP to maximise impact, value, accessibility and benefit consistent with the public interest. State uses third parties’ IP in a transparent and efficient way, while upholding the law and managing risk appropriately. • Significant principles: • • • • (1) State manages its IP consistently, transparently and accountably. (2) State grants rights to its IP with the fewest possible restrictions. (3) State may exercise its IP rights restrictively in limited circumstances (e.g. privacy, security, public health, commercialisation). (7) and (8) State not in the business of commercialising its IP and may only do so with statutory function or Assistant Treasurer’s approval. WoVG IP Policy – Procurement and funding • Principle (9) Procurement of goods and services. • Principle (10) Funding and grants. • The State: • • • Addresses IP rights in agreement. Secures a licence to the IP only to the extent necessary to achieve the purposes of the procurement (procurement) or does not secure a licence except to the extent required for a stated purpose (funding). Only acquires ownership of the IP if a licence is not adequate in the circumstances. Considerations for contract managers • What IP arises in the contract? • Including background IP, third party IP and project IP. For project IP… • Is a licence required? • • • Is securing a licence necessary to achieve the purpose of the procurement? For example, would you need to provide software code to a third party for repair or maintenance? Have you defined the scope of the licence with a stated purpose? Have you dealt with exclusivity, territory, term and sublicence rights? Considerations for contract managers For Project IP (continued)… • Is ownership required? • • • Is ownership consistent with the IP Policy? For example, will ownership maximise the value and accessibility of the IP to the public? Have you considered whether a licence would be sufficient? Will retaining ownership increase the cost of the procurement? • Be aware of variations and contract end. Case study • ICT contract. • Contractor owned IP in software. • Agency did not gain licence over IP. • Agency was unable to repair or maintain software, or engage third party to do so. Further information • IP Policy Guidelines • IP Policy website: http://www.dtf.vic.gov.au/VictoriasEconomy/Victorian-Government-Intellectual-Propertyand-data-policies • Contact us: • • • • Richard Vinciullo (Manager) Jodee Cook (Senior Manager) [email protected] 9651 5150 © State of Victoria Except for any logos, emblems and trade marks, this work (IP in Government Contracts under the Whole of Victorian Government Intellectual Property Policy) is licensed under a Creative Commons Attribution 3.0 Australia licence, to the extent that it is protected by copyright. Authorship of this work must be attributed to the State of Victoria. To view a copy of this licence, visit http://creativecommons.org/licenses/by/3.0/au/. The information contained in this presentation is provided by the State of Victoria for information purposes only. While the State has made every effort to ensure the information contained in this presentation is free from error, the State does not warrant or represent its accuracy, adequacy or completeness. All information provided in this presentation is subject to change without notice.