INTELLECTUAL PROPERTY MANAGEMENT GUIDELINES FOR TAFE COLLEGES

Transcription

1 INTELLECTUAL PROPERTY MANAGEMENT GUIDELINES FOR TAFE COLLEGES 2009

2 CONTENTS 1. BACKGROUND 3 2. INTELLECTUAL PROPERTY IN THE TAFE CONTEXT DEFINITION OF INTELLECTUAL PROPERTY TAFE COLLEGES ARE BODIES CORPORATE THAT CAN CONDUCT FEE-FOR-SERVICE ACTIVITIES TAFE COLLEGES ARE EDUCATIONAL INSTITUTIONS TAFE COLLEGES ARE GOVERNMENT AGENCIES DIAGRAMATIC REPRESENTATION OF TAFE CONTEXT FOR IP MANAGEMENT TYPES OF INTELLECTUAL PROPERTY KEY POINTS ABOUT THE NATURE OF IP RIGHTS FREEDOM TO OPERATE: OBTAINING IP RIGHTS FOR BUSINESS IP OWNERSHIP INTELLECTUAL PROPERTY GENERATED BY STAFF IP GENERATED IN EXTERNAL CONTRACTS AND COLLABORATIONS IP RIGHTS AND STUDENTS COPYRIGHT PATENTS TRADE MARKS INDIGENOUS CULTURAL AND INTELLECTUAL PROPERTY RIGHTS (ICIPR) UTILISATION OF COLLEGE IP SHARING OF IP WITHIN TAFE SHARING OF IP ACROSS THE AUSTRALIAN VET SECTOR COMMERCIAL SHARING OF IP NON-COMMERCIAL SHARING OF IP PUBLICATION THROUGH WESTONE SERVICES COLLEGES IP ADMINISTRATION RESPONSIBILITIES SYSTEMS IP AUDIT FREEDOM OF INFORMATION ISSUES FURTHER INFORMATION AND ASSISTANCE 37

3 CONTENTS (continued) APPENDIX A: GUIDELINES FOR PRICING INTELLECTUAL PROPERTY DEVELOPED BY TAFE COLLEGES 38 APPENDIX B: SUMMARY OF CATEGORIES OF IP PROTECTION 39 APPENDIX C: SAMPLE LETTERS TO STUDENTS AND INDUSTRY PLACEMENT SUPERVISORS ABOUT STUDENT IP 43 APPENDIX D: SAMPLE COPYRIGHT CLEARANCE REQUEST LETTER AND FORM 44 APPENDIX E: LICENSING TRANSACTIONS 45 APPENDIX F: COPYRIGHT CLEARANCE FORM FOR COLLEGE IP 46 APPENDIX G: IP ADMINISTRATION CHECKLIST 47 APPENDIX H: IP AUDIT CHECKLIST 48

4 1. BACKGROUND These Guidelines replace the Intellectual Property Management Guidelines for WA TAFEWA Colleges The Guidelines are intended to offer guidance to TAFE colleges to support a consistent approach for managing intellectual property, and assist in protecting the interests of colleges and the State. The Guidelines have been updated to incorporate: amendments to the Vocational Education and Training Act 1996; 2. Changes to Government intellectual property (IP) policy as stated in the Government Intellectual Property Policy and Best Practice Guidelines (Department of Industry and Resources, 2003) and related documents; 3. The Guidelines for Pricing Intellectual Property Developed by TAFE Colleges (2000), issued by the Minister for Training to TAFE colleges; and 4. Changes to IP law and practice since These Guidelines have been developed by WestOne Services and approved in 2007 by the Minister for Training. WestOne Services was established as an Institution under the Vocational Education and Training (WestOne Services) Order WestOne s functions under that Order and additional roles allocated by the Director General of the Department of Training and Workforce Development include: the co-ordination, arrangement or provision for the collection, storage, maintenance and dissemination or diffusion of vocational education and training IP and related services, provided or produced by public training providers or other persons for the purposes of the State training system; the development and support for implementation of the Intellectual Property Management Guidelines for TAFE Colleges; and provision of IP and copyright best practice advice, professional development and support to TAFE colleges. It is recognised that TAFE colleges operate in different environments and these Guidelines describe how colleges should deal with their own and others IP within the following contexts: TAFE; WA VET; WA public sector; Australian VET sector; and the broader community. The Guidelines are organised into four main parts: Intellectual Property in TAFE colleges Context covers basic IP concepts and the current TAFE colleges context as it relates to IP management. Freedom to Operate addresses steps for TAFE colleges to take to enable effective use of IP in core business. Utilisation of college IP, deals with the broader utilisation of IP and sharing on a commercial or non-commercial basis. Colleges IP Administration covers IP systems and processes. Intellectual Property Management Guidelines for TAFE colleges

5 2. INTELLECTUAL PROPERTY IN THE TAFE CONTEXT 2.1 DEFINITION OF INTELLECTUAL PROPERTY The term intellectual property or IP is used to describe the intangible rights associated with creativity, innovation and business reputation. The owner of IP rights may assign or grant a license to exercise some or all of those rights. IP rights may be divided in a number of different ways: for a fixed term or indefinitely; over a particular geographical area or industry sector; exclusively or non-exclusively; to use or copy in a certain way; or to use or copy a set number of times. Dealing with IP rights is a natural and integral part of college activities. However, TAFE colleges operate in a complex environment where they play several different roles and it is important to identify the role that a college is currently fulfilling in carrying out different activities that involve IP. This is because each of those roles has different implications for IP management. The different roles that TAFE colleges fulfil and the relationships to IP management are outlined below. 2.2 TAFE COLLEGES ARE BODIES CORPORATE THAT CAN CONDUCT FEE- FOR-SERVICE ACTIVITIES The functions and powers of the colleges and college Councils are governed and framed by the Vocational Education and Training Act 1996 (the VET Act). Colleges were created as statutory authorities for specific purposes related to the provision of vocational education and training in Western Australia and all powers are referenced back to this role. The legal entity for the colleges is their Council which is responsible for overseeing the management of the college. Section 37 of the VET Act deals with the role and functions of TAFE Colleges. Recent amendments to the VET Act, proclaimed on 1 June 2009, include clauses under Section 37 which clarify the powers of colleges in dealing with IP. Section 37(1)(da) empowers colleges to: turn to account the vocational education and training expertise of the college by means of the sale of services and the commercial exploitation of intellectual property, including the assignment and licensing of such property. The above amendment provides TAFE colleges with a clear and primary function to sell and/or otherwise commercially exploit their own IP. Intellectual Property Management Guidelines for TAFE colleges

6 2.3 TAFE COLLEGES ARE EDUCATIONAL INSTITUTIONS The powers and functions to provide vocational education and training granted under the VET Act also mean that TAFE colleges are educational institutions for the purposes of the Copyright Act This enables TAFE colleges to participate in licensing schemes, unique to educational institutions only, that are governed by the Copyright Act to allow copying of third party intellectual property when colleges conduct activities for educational purposes. 2.4 TAFE COLLEGES ARE GOVERNMENT AGENCIES By virtue of being Government agencies and part of the State Executive Service under the Public Sector Management Act 1994 colleges must comply with Government policies. The Councils of the colleges are the Accountable Authority relating to the custody, control and management of the assets of the relevant TAFE college (s55 Financial Administration and Audit Act). Management obligations are also imposed upon the CEO of the colleges by the Public Sector Management Act. The IP management responsibilities of TAFE colleges from the Financial Administration and Audit Act and the Public Sector Management Act require that: 1. Chief Executives and accountable authorities take responsibility for the proper utilisation of Government resources. 2. Significant college IP should be properly accounted for under the applicable accounting standards and colleges should note the requirements for maintenance of asset registers under Treasurer s Instruction 410(1)(vii). 3. Colleges should also take appropriate steps to record information relating to their intellectual property to assist in its proper management The Government Intellectual Property Policy and TAFE Colleges In 2003 the WA Government released new Intellectual Property Policy and Best Practice Guidelines (the Policy ) that were developed and centrally supported by the Department of Industry and Resources. The Policy provides that Government agencies (which includes TAFE colleges) should endeavour to optimise the social, environmental and economic benefits to WA from the use and commercialisation of IP generated with Government resources. The Policy provides that Government agencies will ensure that: 1. IP created with Government resources is identified, captured, suitably protected and responsibly managed; 2. Rights to IP are allocated to optimise the benefit to Western Australia from the use and commercialisation of the IP; and 3. Innovation and creativity is encouraged and rewarded (paraphrased). Intellectual Property Management Guidelines for TAFE colleges

7 Seven key principles are provided which describe the general approach agencies should take to IP management and commercialisation: 1. To manage and utilise their IP to enhance delivery of services and performance of core functions. 2. To preserve and enhance the operational value of the IP. 3. To maintain and build upon core business. 4. To work in a spirit of cooperation with the business community in the development and commercialisation of IP. 5. To adopt risk management methodologies to ensure that Government is only exposed to an acceptable and managed level of risk. 6. To seek to apply best practice in the management and commercialisation of IP. 7. To operate in an accountable manner and be prepared to justify their processes and decisions in an auditable and transparent way. The IP Policy also provides an indicative list of factors to assist agencies to determine the benefit to Western Australia : 1. Contribution to the development of the business community. 2. The inclusion of small to medium businesses in IP related opportunities. 3. The development of employment opportunities. 4. Enhancement of human capital through skill and knowledge exchange. 5. Revenues flowing into WA as a result of the commercialisation of the IP. 6. Capital investment in knowledge based industries and research and development infrastructure. 7. Increases in Government efficiency and effectiveness. 8. Social and environmental benefits from broader take up of the IP in the community. 9. Creation of new research and training opportunities. 10. Transfer of technologies from other jurisdictions to Western Australia. 11. Creation of new knowledge based industries. 12. Any potential positive economic, social or environmental impacts. 13. Other relevant factors. Further guidance on management of intellectual property is provided in the Government Intellectual Property Policy and Best Practice Guidelines (DOIR, 2003). The most critical things for TAFE colleges to note in managing IP are: 1. Ensuring that the approach taken to securing ownership of IP rights enables colleges to utilise college IP to enhance VET in WA and generate benefits as addressed in Part 4 of these Guidelines. This does not mean a college needs to own the IP. Each college should assess what rights to the IP should be obtained to enable it to do what it needs to do with the IP and to ensure that the rights are allocated in a way to enable WA to benefit. 2. Putting procedures in place to ensure that when college IP is developed and utilised it doesn t infringe other peoples IP rights (addressed in Part 3). Intellectual Property Management Guidelines for TAFE colleges

8 3. Only obtaining registered protection of registrable IP where appropriate (this will generally only be patents or trade marks). Before applying for registration of any form of registrable IP colleges should first assess whether the benefits of registration are expected to outweigh the costs of the process. Guidance on obtaining registration of IP rights can be obtained from WestOne Services. 4. TAFE colleges should use copyright notices on any copyright materials owned by the college (addressed in Part 3) TAFE Colleges are Subject to the Direction of the Minister for Training Under section 11 of the VET Act the Minister for Training can direct TAFE colleges in the performance of any function either generally or specifically. These Guidelines are issued to colleges under a Ministerial Direction and colleges are required to operate consistently with them. As part of these Guidelines colleges are required to cooperate, consult with and seek direction from WestOne Services as outlined in these Guidelines TAFE Colleges are Part of the TAFE Network All TAFE colleges in WA are part of the TAFE network. This means that colleges should operate consistently with the principles of TAFE so that public interaction with TAFE colleges is consistent. This consistency is also necessary in commercial dealings TAFE colleges have with the business community, including how their commercial activities relate to intellectual property. As part of TAFE all colleges must collaborate. This need to collaborate is reflected in the Pricing Guidelines (Appendix A) for sharing of materials between colleges. The Pricing Guidelines were issued in 2000 by the then Minister for Training. In summary, the Guidelines state that curriculum that is developed by TAFE colleges using funds sourced from the Department of Training and Workforce Development is to be made available to other TAFE colleges at cost recovery and to other providers at a price determined by the college. The Guidelines also state that training materials developed after the enactment of the VET Act (i.e. after 1 January 1997) using Department of Training and Workforce Development curriculum grants will be made available at a reasonable price through Training Publications Unit (now WestOne Services). Learning materials that are developed using other funds sourced from the Department may be made available at a price determined by the college where the college ensures that maximum public benefit is gained from the expending of public resources. Learning materials developed using funds from sources other than the Department may be made available on terms determined by the originating college TAFE Colleges as Government Agencies Under the Copyright Act 1968 As Government agencies, TAFE colleges are also enabled by ss183 and 183A of the Copyright Act 1968 to copy and use third party materials for the Intellectual Property Management Guidelines for TAFE colleges

9 services of the Commonwealth or a State. However, unless it is contrary to the public interest to do so the Government agency must notify the third party copyright owner of the use and reach agreement on the terms of the use. Where agreement is not reached then the Government will pay the relevant collecting society for the use of those copies. Colleges provision of vocational education and training is subject to provisions under Part VB of the Copyright Act (as educational institutions) and not under these provisions (see 3.5.5: Educational Purposes). There are also special provisions for Crown copyright ownership: under ss176, 177 and 178, subject to any agreement to the contrary, the Government is the owner of any copyright works that are made by, or first published by, or under the direction or control of the government. Intellectual Property Management Guidelines for TAFE colleges

10 2.5 DIAGRAMATIC REPRESENTATION OF TAFE CONTEXT FOR IP MANAGEMENT TAFEWA COLLEGES CAN: USE THIRD PARTY IP FOR COLLEGE BUSINESS FOR DIFFERENT PURPOSES: AND ALLOW THEIR OWN IP TO BE USED: EITHER COMMERCIALLY OR THROUGH NON-COMMERCIAL SHARING: FOR DIFFERENT PURPOSES: FEE-FOR- SERVICE ACTIVITIES FEE-FOR- SERVICE ACTIVITIES EDUCATIONAL PURPOSES GOVERNMENT PURPOSES EDUCATIONAL PURPOSES GOVERNMENT PURPOSES IP Management Guidelines for TAFEWA Colleges 2008 Copyright for educational purposes: various WestOne info. brochures IP GUIDELINES FOR TAFEWA IP GUIDELINES COLLEGES FOR TAFEWA COLLEGES Government IP Policy and Best Practice Guidelines 2003 WA GOVERNMENT IP POLICY WA GOVERNMENT IP POLICY FEE FOR SERVICE ACTIVITIES VET Act FAA Trade Marks Act Designs Act etc. EDUCATIONAL PURPOSES VET Act Part VA & VB Copyright Act GOV T PURPOSES Public Service Management Act Ss183 & 183A Copyright Act DIFFERENT LEGISLATION DIFFERENT GOVERNS LEGISLATION IP MANAGEMENT GOVERNS IP IN DIFFERENT MANAGEMENT TAFEWA IN COLLEGE DIFFERENT ROLES TAFEWA COLLEGE ROLES Intellectual Property Management Guidelines for TAFE colleges

11 2.6 TYPES OF INTELLECTUAL PROPERTY Copyright Patents Trade Marks Confidential Information and Trade Secrets Designs Circuit Layout Plant varieties Breeder s rights Copyright as defined by the Copyright Act 1968 (Cth) and as amended or replaced from time to time. A patent within the meaning of the Patents Act 1990 (Cth) and as amended or replaced from time to time. Unregistered and registered trade marks mean trade marks as defined by the Trade Marks Act 1995(Cth) and as amended or replaced from time to time. Information of any kind including original ideas, which has been communicated confidentially or come into possession and are confidential in nature and capable of protection by contractual or equitable means. Registered designs and designs capable of being registered as defined by the Designs Act 1906 (Cth) and as amended or replaced from time to time. A circuit layout and eligible layout as defined by the Circuit Layouts Act 1989 (Cth) and as amended or replaced from time to time. Rights capable of protection for new plant varieties under the Plant Variety Rights Act 1987 and as amended or replaced from time to time. Rights granted and protected under the Plant Breeders' Rights Act 1994 (Cth) and as amended or replaced from time to time. A summary of various forms of IP protection in Australia is included in Appendix B. 2.7 KEY POINTS ABOUT THE NATURE OF IP RIGHTS Some IP rights are provided automatically and do not require registration (e.g. copyright, trade secrets) whereas active steps need to be taken to obtain IP rights in other forms of IP such as patentable inventions, registered designs and trade marks. IP rights provide the owner of those rights with certain exclusive rights which differ depending on the category of IP rights. Ownership of IP is generally determined by establishing who is the author or creator of the IP and then seeing whether it was developed by that person in the course of an employment relationship or whether there is any valid contract which transfers ownership to another person. Just because a college commissions or pays for the development of IP does not mean that it owns it. IP rights exist separately from the IP article. If a college owns the physical article, it does not necessarily follow that the college owns the IP rights. The college may have some rights in relation to Intellectual Property Management Guidelines for TAFE colleges

12 the article, but may not have a license to use the article in the manner the college requires. IP rights are not automatically assigned or transferred to the owner of the physical article. IP rights must be specifically assigned or transferred by the owner of the IP rights. Should a college engage a company to undertake work that is to result in IP such as prepare a report, take photographs, develop a publication or prepare some artwork, without a clear statement on the work contract concerning IP rights, ownership of the copyright or other IP rights in relation to the IP created as a result of the work may not have been obtained by the college. In such instances, colleges can be limited in what might be done with the resulting IP. The college may own the report, photograph or artwork, but risk infringement of the owner s IP rights in authorizing any other party to make use of the material. It is not necessary for a college to own IP to be able to use it. Licenses can offer enormous flexibility and can enable colleges to do anything that the owner of the IP is prepared to authorise the college to do. It can be very easy for colleges to lose the right to protect IP, through inadvertent disclosure, publication or use (in the case of patent protection). When someone else s copyright materials are used it is not always necessary to get permission where the use falls within the statutory license for educational copying, or when the use falls within the statutory definition of fair use (e.g. for an individual s private research or study). When you acquire patented products from an authorised supplier you will rarely be asked to sign a license agreement, but agreeing to license conditions is commonplace when dealing with software or downloading content from the internet. Generally it is necessary to get express permission or licenses to use someone else s IP or to use IP for a different purpose that the one for which it was developed. Intellectual Property Management Guidelines for TAFE colleges

13 3. FREEDOM TO OPERATE: OBTAINING IP RIGHTS FOR BUSINESS 3.1 IP OWNERSHIP Ownership of IP rights allows the owner to assert legal rights and proprietorship over the IP. IP owners can rightfully assign, develop, exploit, franchise, license, publish, sub-license, use or utilise their IP in any manner for commercial or non-commercial purposes. The right to deny or restrict the use of the IP comes with IP ownership. IP rights allow the owner to commercially exploit it and obtain benefit. The basic rule of ownership of IP is that the author, the inventor or the creator is the owner of the IP associated with the original material. Colleges should try as much as possible to own IP on all materials or products developed, generated or created for college purposes. Colleges can own IP as well as authority to exercise ownership rights over IP generated by themselves and their staff. IP ownership rights can be obtained by a college through the creation of IP or the assignment to the college of IP by the original owner. This includes IP owned by individuals, industry bodies, the WA Department of Training and Workforce Development or any other entity that can own IP. Colleges should endeavour to retain ownership of IP rights to meet their business requirements. IP and proprietary rights in collaborative VET materials, and enhancements to recognised works and resource materials, must be specified in written agreements between the parties. Colleges should consider avoiding joint ownership of IP as this may create complexity in the use of IP. 3.2 INTELLECTUAL PROPERTY GENERATED BY STAFF IP Created in the Course of Employment When a college employee generates IP in the course of their employment by the college, the college will be the owner of that IP. It is not always a straightforward exercise to determine whether or not IP is generated in the course of employment. If a college employee undertakes work related activities in their own time the college still will own any IP created. If college staff wish to develop IP outside of their employment and own that IP, and if the IP being developed may be capable of being utilised by the college, the staff member should first speak to their manager and seek agreement in writing that the IP will not be owned by the college. Intellectual Property Management Guidelines for TAFE colleges

14 Before undertaking the development of any significant IP college staff should seek and obtain written approval from their manager. Use of college resources by a member of staff to develop IP does not impact upon ownership but misuse of college resources may be a disciplinary matter. If a staff member wishes to use significant college resources in the course of developing IP which the staff member wishes to assert is not in the course of their employment they should first seek the consent of the college, in writing, to the use of college resources for non-college activities IP Brought to their Employment Whenever any new staff member is employed by a college, the college should enquire as to whether the staff member is bringing any IP such as course notes or materials which they propose to use or deliver in the course of their employment. The college may inquire as to the ownership of the preexisting IP. If the staff member does not satisfy the college that they are entitled to use the materials for the purpose proposed, the college may refuse to permit the staff member to use the materials or may require warranty as to the ability of the staff member to use the materials and an indemnity against liability for any obligation including an obligation to pay damages or legal costs arising from any breach of a third party s IP rights. Generally, the college will be liable if in the course of conducting college business, a staff member breaches another s IP rights Terms of Employment and Use of Consultants Colleges should include an IP clause in all conditions of employment for staff to ensure that all resulting IP rights generated pursuant to the terms of employment are assigned to the college. Where IP is produced or likely to be produced under the terms of a specific agreement, the agreement must include the details of ownership and associated rights of the resulting IP asset. College staff If the preparation of specific learning materials is to be part of an employee s duties, the assigned duties should contain specific reference to the issue of ownership. In such instances, the letter offering employment should clearly state the college s IP policy, and state any conditions relating to a requirement to create IP as part of normal duties. Employees, in accepting such terms and conditions, acknowledge that the IP created in the course of employment remains the property of the college. Intellectual Property Management Guidelines for TAFE colleges

15 Consultants When engaging consultants, the colleges must adhere to the Guidelines for the Engagement of Consultants prepared by the State Supply Commission. These guidelines can be obtained either from the Commission or from the Commission s website at: Agreements used when engaging the services of consultants should include provisions relating to the ownership of pre-existing or background IP that may belong to the consultant or any other person who may be included in, or incorporated in the IP developed. It is advisable to obtain an irrevocable, non-exclusive, non-transferable, royalty-free right to use any pre-existing IP. This includes the right to commercialise the pre-existing IP as part of the IP developed for the public authority. The agreement should also contain a warranty that the consultant has a license to use, to license others to use and to commercialise the pre-existing IP Permission Required for External Commercial Activities Staff wishing to engage in commercial activities outside their employment, including the development and publication or commercialisation of their own intellectual property, should first obtain the consent of their employer in writing. Colleges should clearly identify and communicate to staff who are authorised to consent to such activities. Refer to the Government Intellectual Property Policy and Best Practice Guidelines (DOIR, 2003) for the release of staff from normal duties to be involved in commercialisation ventures Confidentiality Confidential information about the organisation is not intellectual property. The duty to maintain confidentiality is a legal duty of all employees. All colleges have information that is of value to the performance and administration of the college. Staff must be made aware of their duty of confidentiality under the law, both during and after employment with a college. Acquisition of confidential information by staff in the normal course of any individual s work is legal, but actual or threatened unauthorised use of that information without the permission of the organisation is a criminal offence. College staff have obligations under the Public Sector Management Act 1994 to observe and protect the confidentiality of information which they receive and produce during the course of discharging their responsibilities. A college should specifically refer to the duty of confidentiality as a condition of employment in work agreements, duty statements and such other documentation as would be necessary to reinforce those obligations. Intellectual Property Management Guidelines for TAFE colleges

16 This creates a requirement by the employee to: safeguard the interests of colleges by requiring employees to treat as commercial in confidence, information belonging to a college or information which is created or disclosed during the course of discharging their duties; prohibit the disclosure or publication of information relating to client arrangements, dealings, transactions, methods or affairs except in the proper course of duties; and desist from disclosure of IP to third party or parties prior publication or registration of the IP. College staff generating or creating IP outside the normal course of employment must make a written report to the designated IP Officer explaining the nature of the IP and the circumstances surrounding the creation and generation of the IP. Further, college staff are not to disclose to third parties or commercially exploit IP generated by them without obtaining written permission from the college s designated IP officer Staff Contribution to Student Projects IP issues can arise from staff involvement in student projects. information refer to the student issues section of these guidelines. For more Reward and Recognition Issues Where possible and appropriate, colleges may provide recognition incentives to staff and employees as reward for the creativity and innovation involved in the development of commercially or operationally valuable college IP. Any rewards to be provided to college employees are to be consistent with the Guidelines for provision of monetary rewards to innovative Government Employees available from: ).pdf Monetary rewards must be sanctioned by the college Council and the Minister. Monetary rewards are to be purely discretionary unless ownership of the IP is unclear which might justify negotiation between staff member and the college Support for Staff IP Issues When inducting staff into the workplace TAFE colleges should make relevant staff aware of these Guidelines. TAFE colleges should address IP in exit interviews to ensure that exiting staff do not misuse college IP after leaving the college. TAFE colleges should provide appropriate training on IP issues to their staff. Guidance on what training should be provided can be obtained from WestOne Services ([email protected]). Intellectual Property Management Guidelines for TAFE colleges

17 3.3 IP GENERATED IN EXTERNAL CONTRACTS AND COLLABORATIONS This section includes IP which is developed by independent contractors, consultants, under procurement contracts, in collaboration with industry, under research contracts with Universities or other researchers. When a college is involved in any sort of collaboration in which IP is expected to be generated the college should ensure that this is done under a formal legal agreement that addresses resultant IP ownership issues. Colleges should not assume that they obtain rights to IP generated in external contracts and collaborations. They should ensure that if any IP is generated in the course of the contract or collaboration they get rights as necessary to enable the college to do what it should reasonably wish to do into the future and where appropriate the issue of commercialisation of the IP should be considered and addressed. Colleges will have to enter to into a range of contracts and agreements while managing and commercialising IP. Some of the contracts and agreements are follows: publication agreements; assigning copyright and other IP rights; commercialisation agreements; consultancy agreements; confidentiality agreements; collaborative ventures; commercial funding arrangements or financial assistance. Before development of IP commences, a college should ascertain the following with all parties to an agreement: ownership rights in relation to the end product, resultant material or products of the collaboration or contract agreement; ownership rights in any IP brought to the project by either party, including referral to rights associated with the underlying or original material, and subsequent rights in the enhanced or modified material; ownership rights of IP in future enhancements or modifications to the products of the agreement, including the right and authority of the parties to authorize enhancements at a later stage and join with a another partner to enhance the IP; rights associated with development or publication of the materials produced pursuant to the agreement in new or other forms not original; right to license third parties to develop or enhance the products or materials produced under the agreement; rights to commercialise the IP; and if the IP is commercialised how the revenue from the commercialisation be shared. Factors to take into account in determining what IP rights TAFE colleges should obtain in contracts include: the cost of obtaining the proposed level of rights; the interests of TAFE; Intellectual Property Management Guidelines for TAFE colleges

18 the interests of the VET Sector; and any other matters addressed in the Best Practice Guidelines concerning allocation of IP rights. If pre-existing IP belonging to an external contracting party is to be incorporated into an IP asset created or generated during the course of the contract, collaborative venture or partnership, the college should obtain the respective person/s written irrevocable license to use the IP for specific purposes to meet business needs. The college should retain ownership rights in such resultant production and over the IP created. When an employee, staff member, contractor, consultant or other person bringing pre-existing IP to a project chooses to maintain ownership of the IP, the college should: ensure that the college is granted a purpose-specific, non-exclusive license to use any pre-existing IP owned by a third party; seek warranties that the person providing consent has the power and ability to give that consent; obtain an indemnity from liability if a college infringes someone s IP if the person purporting to provide consent did not have the ability or authority to do so; and retain college ownership rights in the resultant production. If a college is using pre-existing IP which is owned by another organisation or individual it should ensure that it has the rights necessary to do what it is planning to do with that pre-existing IP. This may be achieved in a number of ways depending on the type of IP, including: obtaining copyright clearances; using appropriate clauses in contracts; and undertaking suitable searches. While entering into agreements for developing or commercialisation of IP with third parties, colleges must include provisions in relation to the confidentiality obligations of all parties concerned within the agreement. Collaborations between TAFE colleges will also require clear documentation of agreed ownership, rights and responsibilities. Colleges should also refer to the Government Intellectual Property Policy and Best Practice Guidelines (DOIR, 2003). 3.4 IP RIGHTS AND STUDENTS Student Ownership of IP Students own IP generated in student projects unless there is a legally binding agreement (with the college or a third party) to the contrary. If the student creates IP in the course of employment with the college or as part of an industry placement the student is to be considered an employee and the college/organisation employing the student will own the IP unless there is a legally binding agreement to the contrary. Intellectual Property Management Guidelines for TAFE colleges

19 Colleges should inform the employer providing the industry placement and the student that they should consider and discuss ownership of IP created during an industry placement. Sample letters to industry placement supervisors and are provided in Appendix C. Agreements entered into with students under 18 years of age are not legally enforceable. This means that students under 18 years old cannot execute an assignment or license and this also cannot be done by their parent/s on their behalf. However, as a safeguard may want parent to sign for the use of the student s IP Staff Contribution to Student Projects If a college employee (e.g. lecturer) makes a material contribution to a student project and is effectively a co-author or co-creator of the student work, the part of the IP generated by the college employee will be owned by the college jointly with the student. If the college owns IP jointly with a student it may negotiate for a license or assignment of the student s interest to enable the commercialisation of that IP. The agreement between the college and student should provide for sharing of any proceeds from commercialisation with the student. Factors to be taken into account when determining the student share of proceeds include: the comparative amount of the IP owned by the student; the investment by the college of resources to the commercialisation; the risks being taken on by the college; and the contribution made by the student to the commercialisation process Use of College Resources in Student IP Students should not use significant college resources in developing IP as part of their studies without first obtaining the college s agreement. If a student project is going to use significant college resources in a project in which IP is going to be generated the college should consider whether it should enter into a contract with the student regarding that IP prior to the commencement of the project IP Awareness for Students Colleges should facilitate the provision of information to students about IP but should not provide IP advice to students. An example of appropriate information for students is the IP Professor Service provided by IP Australia at Intellectual Property Management Guidelines for TAFE colleges

20 3.5 COPYRIGHT Definition Generally, copyright will be the most common form of IP created by staff working in or for the colleges and externally-owned copyright is the most common form of IP used in the course of college business. Copyright exists in many works produced or used in the course of college operations such as: text publications, including reports and journal articles; teaching and learning materials, such as manuals, videos, audio tapes or other AV productions; special curriculum and course outlines developed for industry or other clients; software programs written by or for the college; illustrations or photographs produced by or for college purposes; and maps, plans and diagrams produced by or for the college. In Australia, copyright is governed by the Copyright Act 1968 (Cth) Available at: As defined, copyright protects artistic works including: paintings, drawings, technical drawings, maps, plans, photographs, and sculptures. Written materials include: articles, novels, reports, instruction manuals, scripts, lyrics, and screenplays. Compilations include: databases, directories and anthologies. Published editions, dramatic works, musical works, sound recordings, cinematograph films and computer programs are covered, as are broadcasts including television and radio programs, and multimedia works including digitally stored material works on CD ROM and video disk Ownership and Protection The basic rule for ownership of copyright is that the author or the creator is the owner of copyright in the original material created. Should the author or the creator create IP in the course of employment and as part of the employee s normal duties, the employer owns the copyright under section 35 of the Copyright Act Thus, the college owns the copyright in IP created by the staff in the course of employment. In Australia, copyright protection is automatic and there is no system of registration. Copyright protection begins from the time the material is created and the material need not be published to obtain protection. There is no legal requirement under the terms of the present Copyright Act or under international convention requiring the inclusion of a copyright notice to assure an owner protection under the law. Not all works protected by copyright are commercially significant to a college and the simple inclusion of a copyright notice on material does assert copyright ownership. This Intellectual Property Management Guidelines for TAFE colleges

21 notwithstanding, inclusion of copyright notice remains a positive assertion of ownership. A college should positively assert its copyright ownership on all materials or other products developed or produced over which it holds or retains copyright ownership. This should be done through inclusion of the copyright notice on the materials. The copyright notice contains three distinct elements; the copyright symbol (For sound recordings, the letter P in a circle or in brackets is used instead of the C in a circle), the name of the college, and the year of publication. For example: xxxxx college of TAFE Colleges may also wish to add the following notice: Not to be reproduced or copied without the prior written permission of xxxxxxx college of TAFE. Enquiries should be addressed to ####### (name and address of the IP Officer of the respective college). Absence of the copyright notice does not imply that the material in question is copyright-free or in the public domain. Colleges involved in the development of online training resources must incorporate the copyright notice on the home page or at the highest level of the online resource developed. The Crown owns IP created by employees working for the Crown or under the control and direction of the Crown. Sections 176 and 178 of the Copyright Act 1968 states that the State owns the copyright in an original literary, dramatic, musical or artistic work made by, or under the direction or control of the State. Section 177 states that the State is the owner of the copyright in an original literary, dramatic, musical or artistic work first published in Australia, if first published by or under the direction or control of the State. TAFE colleges have been delegated the authority to manage and exploit IP on behalf of the Crown Duration Duration of copyright depends on the nature of the material created and whether the material has been published or not. Since the ratification of the Australia-United States Free Trade Agreement 2005, duration of copyright is generally the life of the creator plus 70 years (it was previously life of creator plus 50 years). If the literary, dramatic or musical work had not been published, performed, broadcast or offered or exposed for sale to the public before the death of the creator, the copyright in the work continues for 70 years from the year of first publication, performance, broadcast, or record of the work being first offered or exposed for sale to the public. Intellectual Property Management Guidelines for TAFE colleges

22 3.5.4 Infringement In Australia, persons not owning copyright and without license from the owner infringe copyright in reproducing or copying any substantial part of a work or in authorising such acts. Copyright is also infringed when a person, without the license of the owner, imports an article into Australia for the purpose of selling, letting for hire, or by way of trade offering or exposing for sale or hire the article. This includes distributing the article for the purpose of trade or by way of trade exhibiting the article in which the copyright exists. If a college wishes to use IP owned by another party, and the use they want falls outside that allowed under the statutory licenses (see 3.8.5), then colleges must request and obtain permission from the owners of the IP to use their IP. The exact form of such requests is not important, as long as it clearly identifies essential elements including the: title or name of the work the college is seeking to copy or extract from; particular pages, illustrations or sections within the work that the college wishes to use or copy; purpose and aim of the a new work or production in which the college will apply or use the extract or the work; and intended audience and market that the new work or production targets. The intention of colleges providing such information is to ensure that the organisation or individual from whom permission is being sought, has as much information as possible to allow assessment of the nature and commercial value of the request. A sample request letter and form is included as Appendix D. If a college previously obtained a consent to use some IP materials and now wants to again use those materials for a different purpose it should check the terms of the original consent to see if the original consent authorises the new proposed use of the materials. In the event of copyright infringement, colleges should obtain legal advice or Solicitors before taking any action. Colleges must monitor infringements of their IP rights and take appropriate steps to protect against such infringements Educational Purposes The copyright in a work is not infringed by a college if the college includes a short extract from the work or an adaptation of the work in a collection of literary, dramatic, musical or artistic works in a book, sound recording or cinematograph film intended for educational use or training instruction. Section 200 of the Copyright Act allows use of works and broadcasts by colleges for educational purposes. Section 200(1) states: The copyright in a literary, dramatic, musical or artistic work is not infringed by reason only that the work is reproduced or, in the Intellectual Property Management Guidelines for TAFE colleges

23 case of a literary, dramatic or musical work, an adaptation of the work is made or reproduced: (a) (b) in the course of educational instruction, where the work is reproduced or the adaptation is made or reproduced by a teacher or student otherwise than by the use of an appliance adapted for the production of multiple copies or an appliance capable of producing a copy or copies by a process of reprographic reproduction; or as part of the questions to be answered in an examination, or in an answer to such a question. Colleges do not infringe the copyright in a work if the whole or part of a work is copied to include the copy in the college s library collection under section 44 of the Copyright Act. Colleges must state in an appropriate place in the book, on the label of each record embodying the recording, or in the film, that the work is being intended for use by college for the purposes of education only. The college must obtain legal advice before using copyright works for which no license is obtained, and sufficiently acknowledge the source and author of the work or adaptation Government Purposes Under s183 and 183A of the Copyright Act 1968 the Crown or the Government does not infringe copyright in a work if the act of copying, reproducing or adapting the work is done for the services of the Commonwealth or the State. However, unless it is contrary to the public interest to do so the Government agency must notify the third party copyright owner of the use and reach agreement on the terms of the use. Where agreement is not reached then the Government will pay the relevant collecting society for the use of those copies. Colleges provision of vocational education and training is subject to provisions under Part VB of the Copyright Act (as educational institutions) and not under these provisions (see 3.5.5: Educational Purposes). There are also special provisions for Crown copyright ownership: under ss176, 177 and 178, subject to any agreement to the contrary, the Government is the owner of any copyright works that are made by, or first published by, or under the direction or control of the government Fair Dealing Fair dealing refers to the fair use of a work without infringing the copyright of the work. No permission is required from the copyright owner for fair dealing. The Copyright Act provides a number of instances of fair dealing. Under the Copyright Act fair dealing with a literary, dramatic, musical or artistic work, or with an adaptation of a literary, dramatic or musical work, for the purpose of research, study, criticism, review or for the purpose of reporting news does not constitute an infringement of the copyright. Fair dealing provisions, however, do not permit multiple copies. Intellectual Property Management Guidelines for TAFE colleges

24 3.5.8 Statutory Licenses The Copyright Act provides certain uses of copyright work by colleges and educational institutions that would otherwise be an infringement of the copyright. Statutory licenses to the colleges permit them to make copies of published works and off-air copying of broadcasts. Under the Copyright Act 1968, certain collecting societies representing copyright owners are permitted to collect copying fees from the colleges and educational institutions and administer or license the copyright on behalf of the copyright owners. These agreements (licenses) with collecting societies require attention and monitoring to ensure colleges limit any potential infringement liability through the actions of employees or a breach of the conditions of the agreements. WestOne Services involvement in agreements with the copyright collecting societies on behalf of the colleges refers the nature of activity in which the colleges engage. Colleges need to assess obligations relative to any agreements with collecting societies and obtain further information and assistance about obligations under such agreements from WestOne Services. An information brochure is available at Some of the collecting societies with which a college may have dealings are: Copyright Agency Limited (CAL); Screenrights; Australasian Performing Rights Association (APRA); Phonographic Performance Company of Australia (PPCA); Australasian Mechanical Copyright Owner s Society (AMCOS) and Visual Arts Copyright Collecting Agency (Vi$copy). 3.6 PATENTS As defined, patents are granted for inventions, not discoveries or ideas, which are useful, novel and are not obvious to people skilled in the relevant field. The invention can be a new product, process, or improvements to existing products or processes. Human beings and biological processes for human reproduction are not patentable inventions, however, methods of treating humans may in some circumstances be patentable. Business systems and computer programs, however, are patentable. The Patent Law in Australia is governed by the Patents Act 1990 (Cth), available at: Meaning Section 13 of the Patents Act details the rights of a patentee: Subject to this Act, a patent gives the patentee the exclusive rights, during the term of the patent, to exploit the invention and to authorize another person to exploit the invention. Patent rights are the exclusive right and personal property of the patentee. These rights are capable of assignment. The assignment must be in writing and for a specified area. Section 14 of the Patents Act provides that: Intellectual Property Management Guidelines for TAFE colleges

25 3.6.2 Types of Patent (1) An assignment of a patent must be in writing signed by or on behalf of the assignor and assignee. (2) A patent may be assigned for a place in, or part of, the patent area. There are two types of patent rights in Australia. These are the Standard Patent and the Innovation Patent, which replaced the Petty Patent as of 24 th May The Standard Patent extends for 20 years from date of filing of provisional specification, while Innovation Patent extends for 8 years from date of filing. It is easier and cheaper to obtain an Innovation Patent than a Standard Patent. Innovation Patents do not protect human beings, plants and animals or biological processes relating to these categories Protection Unlike copyright, the protection of patent is not automatic. Patents must be registered with the Australian Patent Office to obtain protection. Patent protection in Australia lasts for 20 years in the case of Standard Patent and 8 years in the case of an Innovation Patent. It takes approximately 2-3 years to be granted a standard patent while an Innovation patent takes about 3-6 months. Innovation patents are shorter-term patents, which are faster and less expensive to obtain. To obtain patent protection in Australia, inventors must file a patent application containing the complete or provisional specification with the Australian Patent Office. The application must comply with the requirements prescribed under the Patent Act. The filing date of the provisional application gives the inventor a priority date. The inventor must file the complete specifications with the patent office within 12 months of that priority date. The patent office then examines the application and on evaluation grants patent to the inventor if the application satisfies all eligibility criteria. Colleges must not publicly disclose, that is publish, demonstrate, sell or publicly discuss, an invention before a patent application is filed as a provisional patent specification or final specification. The college must obtain legal advice before it conducts a trial of an invention. Disclosing an invention invalidates the inventor s right to patent protection. Patent searches should be considered if a college is becoming involved in a new developmental field of research. 3.7 TRADE MARKS Trade marks are signs used to distinguish the goods or services of one trader from those of another. Continuous use of trade marks on the trader s goods and services increases the reputation of the goods and services. Sometimes trade marks indicate the origin of goods and services. The owner of a trade mark has exclusive rights to use the trade mark in relation to particular goods and services, and to sell and license the trade mark rights. Trade marks may Intellectual Property Management Guidelines for TAFE colleges

26 be registered or unregistered. Registered trade marks are governed by the Trade Marks Act 1995, available at: Meaning Section 17 of the Trade Marks Act defines a trade mark as: A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. As such, a sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, and aspect of packaging, shape, colour, sound or scent. It should be noted, however, that certain signs are excluded from registration under the Trade Marks Act Trade Mark Protection Trade marks are initially protected for 10 years under the Trade Marks Act and are then renewable every 10 years. To obtain legal protection under the Trade Marks Act, trade marks must be registered. Trade marks can be registered in 42 different classes. The procedure for registering a trade mark is under section 27(1): A person may apply for the registration of a trade mark in respect of goods and/or services if: (a) the person claims to be the owner of the trade mark; and (b) one of the following applies: (i) the person is using or intends to use the trade mark in relation to the goods and/or services; (ii) the person has authorised or intends to authorize another person to use the trade mark in relation to the goods and/or services; (iii) the person intends to assign the trade mark to a body corporate that is about to be constituted with a view to the use by the body corporate of the trade mark in relation to the goods and/or services. An application to register the trade mark must be filed with the Australian Patent Office. To obtain registration of a mark as a trade mark, the applicant must show the mark to be distinctive. The application is then examined for validity. The mark is registered as a trade mark once the application satisfies all requirements of the Trade Marks Act. When the mark is registered as a trade mark, the owner of the mark becomes the registered trade mark owner. The registered trade mark owner has exclusive rights under the Trade Marks Act to: use the trade mark (Section 20(1)(a)) and deal with the trade mark (section 22(1)); Intellectual Property Management Guidelines for TAFE colleges

27 authorize other persons to use the trade mark in relation to the goods and/or services in respect of which the trade mark is registered (Section 20 (1) (b)); and obtain relief under the Trade Marks Act if the trade mark has been infringed (Section 20(2)). Trade mark searches: Before utilising any new name for a product or service or a new logo in association with college products or services, consideration should be give to whether any searches should be undertaken to determine if anyone else has rights associated with the name or logo. This can include undertaking an internet search or may involve undertaking a trade mark search Certification Trade Marks There is a type of trade mark called as Certification Trade Marks (CTM). CTM s indicate that the goods and services are of particular standard. Certification Trade marks are used to certify the quality, accuracy and in cases of goods origin, material or mode of manufacture. Certification Trade Marks are to be used only after obtaining approval from the Trade Marks Office and the Australian Competition and Consumer Commission (ACCC) Unregistered Trade Marks Unregistered trade marks can be protected, but only if the trade mark has an established reputation. The common law action to enforce rights in an unregistered trade mark are called passing off, alternately; actions for misleading or deceptive conduct are available under the Section 52 of Trade Practices Act 1974 (Cth) and section 10 of Fair Trading Act 1987 (WA). Use of unregistered trade marks or unauthorized certification trade marks might mislead or deceive customers. Colleges must register trade marks and certification trade marks before using such marks in association with any goods or services. The college must obtain legal advice before lodging applications for registration and use of trade marks. 3.8 INDIGENOUS CULTURAL AND INTELLECTUAL PROPERTY RIGHTS (ICIPR) ICIPR is a reference to Indigenous peoples rights to their heritage. Indigenous peoples heritage is a living heritage and it includes objects, knowledge, performing works, and literary works - all of those things created in the past, now and in the future. The nature and use of Indigenous peoples heritage is passed down from generation to generation. Usually the particular objects, sites and knowledge pertain to a particular Indigenous group or territory. Intellectual Property Management Guidelines for TAFE colleges

28 Heritage includes: literary performing and artistic works - songs, music, dance, stories, ceremonies, symbols, language and designs; all items of moveable cultural property; immoveable cultural property - sacred sites, burial grounds; and documentation of Indigenous peoples heritage in archives, films, photographs, video and audio tapes and all form of media What is ICIPR? Essentially, ICIPR are a bundle of rights of Indigenous peoples which protect the right to: own and control ICIPR; commercialise ICIPR in accordance with traditional laws and customary obligations; benefit commercially from the authorised use of ICIPR; enjoy full and proper attribution; and protect significant and sacred materials. There is no specific legislation in Australia that recognises ICIPR. Increasingly Indigenous communities are using non legislative means such as contract and protocols to protect their ICIPR as IP legislation is not always adequate. For example copyright can only provide limited protection of ICIPR, in particular: the material form requirement is not always met where the stories and songs have been passed orally from generation to generation; the period of copyright protection is finite and is unable to protect traditional art which has been passed through generations; and copyright is generally granted to the author and does not recognise communal or customary ownership of cultural heritage of Indigenous tribes and clans Guidelines when Negotiating with Indigenous Communities The following questions are intended as a best practice guide to assist educational institutions in negotiations and consultations with Indigenous communities to ensure that an Indigenous perspective is sought on all issues surrounding the project. Does your nominated Indigenous community representative have the authority to speak for or on behalf of the proposed project? Have you received written consent from the traditional owners/custodians of ICIPR for the project? Does the community understand the aims, objectives and methodology of the project? Does the community understand how the outcome of the project will be used? Have you made arrangements with the community to provide feedback on the project at all stages? Have you acted in good faith and respected the privacy of Indigenous peoples and communities? Have you ensured that the community understands the copyright issues of the project? Intellectual Property Management Guidelines for TAFE colleges

29 Does your proposal safeguard Indigenous sensibilities? Proposals should also demonstrate that: the project will not result in damage to Indigenous cultural integrity; and the collected information remains the intellectual property of the people who provided it. Intellectual Property Management Guidelines for TAFE colleges

30 4. UTILISATION OF COLLEGE IP Colleges should effectively manage and utilise college IP to optimise VET outcomes in Western Australia and to otherwise benefit the people and economy of Western Australia. This section captures concepts of use by the college, non-commercial sharing and commercialisation (sharing or transfer on a commercial basis). These Guidelines do not place an emphasis on either commercial or non-commercial sharing. Colleges should identify the importance of their IP as a resource which can be utilised to benefit the WA VET sector and the State generally and adopt an approach to maximise those benefits. 4.1 SHARING OF IP WITHIN TAFE TAFE colleges are encouraged to share IP such as training materials, curriculum and administration systems, with other TAFE colleges. TAFE colleges should charge each other no more than the amount provided under the Ministerial Pricing Guidelines provided in Appendix A. TAFE colleges are encouraged to let other colleges know what IP they have that is available for sharing. 4.2 SHARING OF IP ACROSS THE AUSTRALIAN VET SECTOR The AEShareNet system is a web-based system that operates to streamline the licensing of intellectual property, in particular VET IP, so that learning materials are developed, shared and adapted efficiently. AEShareNet Limited is a non-profit company, established by the Australian Ministers for Education and Training, which operates the AEShareNet system. The State and Commonwealth Ministers for Education and Training in Australia comprise the shareholders of AEShareNet Limited. WestOne Services is the only West Australian member of the AEShareNet system. As the WA member WestOne acts on behalf of the state education and training sector to facilitate the licensing of learning materials. Licenses can be either to use and/or adapt intellectual property owned by third parties or to allow use and/or adaptation of intellectual property owned by TAFE colleges, the Department of Training and Workforce Development or WestOne. Licenses can be free or for a fee depending on the wishes of the IP owner and the circumstances of the use requested. TAFE colleges are encouraged to contact the IP Unit at WestOne Services for requests to license any learning materials through AEShareNet and to make any of their own materials available for licensing through AEShareNet. Intellectual Property Management Guidelines for TAFE colleges

31 4.3 COMMERCIAL SHARING OF IP TAFE Powers and Obligations in IP Commercialisation Commercialisation of IP is the promotion, advertisement, publication, distribution, supplying, hiring, marketing, offering to sell or hire, and franchising to the market place for a commercial return. TAFE colleges obtain their power to engage in commercial activities relating to IP under Section 37(1)(da) of the VET Act. Under those powers colleges can engage in commercial activities relating to the commercialisation of their IP if those activities are capable of being carried out under a contract and involve the sale or assignment of the IP or the licensing of the IP i.e.granting rights to third parties to use or reproduce the IP. Business arrangements are defined as including a company, a partnership, a trust, a joint venture, or an arrangement for sharing profits. Any exercise of a business arrangements power can only be undertaken with the consent of both the Minister for Training and the State Treasurer, and only in relation to the provision of training for purposes specified in the VET Act. Business arrangements are therefore rarely used. Colleges should try to commercialise IP assets for the benefit of the college and the WA VET sector, yet in doing so avoid any significant interference with the college s operational activities or service delivery. The exercise of these powers carries the responsibility of ensuring that practices are in place to protect and manage the interests of the VET sector and the college. Colleges should not expend a significant amount of resource in developing an IP asset for the sole purpose of commercialisation of that asset. Commercialisation of IP should be only an ancillary part of a college s operational activities and not become part of a college s core business. If a TAFE college wishes to enter into any commercial activities relating to IP which is not routine/covered by the Pricing Guidelines they should: 1. Refer to the Government Intellectual Property Policy and Best Practice Guidelines (DOIR, 2003). 2. Seek appropriate advice: colleges are encouraged to consult with WestOne Services ([email protected]) for guidance and advice on commercialisation of college IP. 3. Ensure that the Council of the college is informed and supports the commercialisation initiative. 4. Ensure that any commercialisation related decisions are made under delegation from the Council or CEO of the college; and 5. Ensure that the Minister for (Education and) Training is informed of the commercialisation activity. Intellectual Property Management Guidelines for TAFE colleges

32 The Governing Council is ultimately responsible for the assets and financial operations of a college including the commercialisation of IP. Nevertheless, a governing council may delegate authority to an individual at the appropriate level to deal with issues concerning contracts, joint ventures, assignment, ownership and licensing associated with commercialisation of IP Assessment and Evaluation of IP Commercial Potential Colleges must obtain commercial and legal advice on the commercial potential and viability of any IP before commercialisation is undertaken. This assessment must be professionally done at a very early stage. In evaluating the commercial potential of IP, issues to be considered include: development costs, cost recovery, cost of commercialisation, the market potential of the IP, public benefit or public interest, royalties, licensing fees, sale amounts, the operational costs of the commercialisation, as well as the rights and obligation of colleges upon the commercialisation. When colleges choose a commercial partner or licensee or distributor to commercialise an IP asset, every effort should be made to choose a West Australian or Australian enterprise as a partner or licensee FORMS OF IP COMMERCIALISATION Exploitation of IP is utilization of IP for profit. Exploitation of IP can be carried out in a number of ways like sale, license, royalty or assignment on fee. Colleges must enter into legally enforceable agreements with third parties before exploitation of IP commences. Agreements must address issues concerning fees, payments and royalties relating to the exploitation of IP. It is important that colleges maintain and protect confidentiality while trying to negotiate or discuss the exploitation of the IP. Wherever the disclosure of IP is involved, colleges must use confidential disclosure agreements. Advice and assistance on confidential disclosure agreements can be obtained from WestOne Services. Licensing of IP is the common way of exploiting IP. When colleges license IP themselves, there are several issues which must be considered. Advice on licensing agreements is available from WestOne Services upon request. All such licensing agreements must be legally vetted. To assist the colleges with the various aspects of licensing transactions, a list of issues for consideration are included in Appendix E. When colleges license IP assets, agreements should normally be nonexclusive, non-transferable and must include the following: rights assigned under the license, licensed territory, performance obligations, royalties, duration of license, uses of the asset, reproduction and making of copies, warranties, indemnities, payment of fees and dispute resolution; ownership, noting that the original ownership to remain with the college and cannot be transferred or sold to a third party without express permission of the college; Intellectual Property Management Guidelines for TAFE colleges

33 identification and attribution of the college as the owner of the IP in the materials produces and marketed by the licensee; rights over enhancements to the original product, including the extent and nature of enhancements to be made, and the rights the college will have to access and use of the enhancements; issuance of authorised versions of the materials to third parties and retention of any subsequent commercial benefit; and responsibilities for maintaining the IP. Certain rights like reproduction, copying and using or marketing associated with IP assets can be sold or assigned by colleges to third parties. In the event colleges decide to sell or assign an IP asset, colleges must consider factors such as the colleges and the Crown s liability, if any, from sale of the IP asset, as well as any requirements to access and use the IP in the future. A college should operate in as open, accountable and competitive manner to obtain the best deal for itself and the VET sector. Colleges must obtain legal and commercial advice from legal or patent attorneys before entering into licensing or sale arrangements. License and sale agreements must be legally vetted Risk Management Whenever colleges commercialise or commercially exploit IP assets, a number of risks and liabilities occur. The colleges must minimize or prevent the occurrence of such liabilities. The colleges must have procedures and measures to identify and evaluate the risks involved, and initiate take steps to minimise exposure to such risks and liabilities. Wherever feasible commercialisation agreements should include indemnities from liability. Colleges must take insurance cover against loss or liabilities arising from the commercialisation of IP asset. Colleges must try to avoid commercialisation or exploitation of IP assets that attract large or excessive risks. Much of the risk and liability should be passed on to the commercial partner or licensee. In assigning risk, colleges must refer to Treasurer s Instruction 109 under the Financial Administration and Audit Act (FAAA) Intellectual Property Management Guidelines for TAFE colleges

34 4.3.5 Revenue Generation from Commercialisation Activities Colleges should consider the economic benefits of the Crown before deciding to commercialise IP. In exploiting IP, colleges should aim for no less than full cost recovery. Commercialisation of IP by the college for revenue generation may involve significant monetary expenditure and colleges must obtain necessary advice before venturing into commercialisation. When commercialising IP, colleges may earn a great deal of revenue through royalties and licensing fees. Under the terms of Section 48 of the VET Act, monies received by colleges from commercial activities form part of the funds of the college. The revenue received from the IP commercialisation is part of these funds. Consequently, colleges may use such funds in accordance with the provisions of the VET Act and the FAAA. Before granting permission to use college IP, it is necessary to ensure that the request is genuine and that the request has come from an appropriate source. In granting a request, the college s clearance letter must specify the purpose and person or organisation to whom the permission is granted. A sample clearance form is included as Appendix F. 4.4 NON-COMMERCIAL SHARING OF IP It is entirely acceptable in appropriate circumstances for TAFE colleges to share IP on non-commercial terms. This may include providing IP for free or for the costs of administration only. If a college wishes to share IP in a noncommercial manner they should still ensure that they consider what terms it should attach to the non-commercial sharing. These conditions should include: What the recipient of the IP should be able to do with the IP and what restrictions if any should be imposed, such as: - rights to use the IP unaltered; - rights to make a limited number of copies of the IP; or - rights to use for non-commercial purposes only; and If the recipient is entitled to modify the IP what are the conditions relating to ownership of and sharing of that modified IP. 4.5 PUBLICATION THROUGH WESTONE SERVICES A key function of WestOne Services is to facilitate the development and distribution of IP created by TAFE colleges to benefit the whole of the WA VET sector (see Pricing Guidelines and Vocational Education and Training (WestOne Services) Order TAFE colleges can enter into agreements for WestOne to publish college IP and distribute to other TAFE colleges, the wider WA VET sector and also VET sector nationally and internationally. WestOne can be contacted at [email protected]. Intellectual Property Management Guidelines for TAFE colleges

35 5. COLLEGES IP ADMINISTRATION Colleges manage their own IP and are responsible for the assets and financial operations of these assets. Colleges should adopt appropriate practices to manage and utilize IP assets in their best interests and in the best interest of the Crown and Western Australian VET sector. College authorities should exercise due care, skill and diligence in the management of IP assets. Failure to exercise such care and diligence may result in the following consequences: the loss of the ability to protect the IP; exposure to the risk of infringement of others IP rights; inability to identify the ownership of IP under the college s control; duplication of effort to redevelop pre-existing assets; lack of awareness of the value of IP assets; and inability to commercialise the IP. Procedures and processes detailing the manner in which colleges obtain, maintain, manage and license IP rights are necessary. Procedures to guard against acquiring, assigning, licensing, reproducing or distributing IP rights without adequate protection or in violation of IP legislation or the rights of IP owners are important as are controls to protect the IP rights of the colleges. For effective management of IP assets, colleges should consider the extent to which: all staff are made aware of the IP assets that a college might generate as well as the rights and responsibilities arising from IP asset generation; there is a need to offer appropriate IP policy and guideline training for staff, including IP seminars and induction courses for new staff; all IP assets are identified in an internal control system where by staff may locate and report existing and future IP; mechanisms by which reviews and audits of any research and development carried out in the college might be undertaken; measures appropriate to securing IP ownership protection and commercialisation have been established; and there are means established for the effective monitoring and enforcement of IP copyright. A checklist is provided at Appendix G for the assistance of colleges in determining how best to structure their management arrangements for the administration of their IP activities. 5.1 RESPONSIBILITIES It is the responsibility of the college to put in place systems appropriate to the management of IP. It is a college responsibility to ensure that relevant staff are demonstrably competent in the management of IP. Some specialist staff will require training and education in IP matters to ensure that they can adequately perform their roles. The provision of training, information sheets and regular IP information in newsletters are methods of raising IP awareness among staff. Intellectual Property Management Guidelines for TAFE colleges

36 Should a college anticipate an employee having responsibility for IP or being required to create IP under their terms of their employment, the individual s job or duty description should contain specific reference to the ownership of the IP created in the course of employment. Management of IP covers commercialisation and compliance aspects. Colleges should designate officers with responsibilities for the commercialisation of IP assets and for compliance associated with the IP owned and administered by the college. The officer with this responsibility strives to assure the college fulfils its obligations under the IP legislation, guidelines and compliance procedures. Appointments of such officers provide college staff with a source of information and assistance on IP maters. All inquiries and requests related to IP should be forwarded to the responsible officer within the college, thus providing a safeguard against an employee inadvertently giving away or licensing others to use college IP. The responsible officer will need to deal with administrative arrangements associated with the following IP concepts: development; protection; management infringement; licensing; and commercialisation; Given the capacity of a college to enter into joint ventures and other commercial arrangements, it is important that IP ownership remain with the college. To this end, the designated officer should have the capacity to deal with the administration of commercial and joint venture activity relating to IP issues. 5.2 SYSTEMS Colleges have different IP management options. The management system and methods of management applied to IP will vary with the type of IP. A college in-house specialist may manage IP assets, but an external agency from government or the private sector may manage the assets when there is no inhouse expert to manage the IP. Wherever possible colleges should use inhouse managers, nonetheless, colleges may choose a combination of in-house and external capability in managing these assets. A register and a database for all IP owned and administered by the college must be established. This database must also contain details of all agreements entered into by the college. Staff may use this database for copyright management or as a reference. Colleges may apply any appropriate system for IP management. However, the systems in place should facilitate: access to details of IP ownership, including licenses obtained and assigned by the college; the regular and routine updating of the IP details; and means of obtaining legal and commercial advice. Intellectual Property Management Guidelines for TAFE colleges

37 5.3 IP AUDIT Colleges have responsibility to manage and, where necessary, commercialise their IP. Consequently, each college must be prepared to conduct IP audit and maintain the systems and process necessary for conducting such audit. The purposes of an IP audit is to improve the accuracy of information and the accountability associated with the IP controlled, owned and administered by the college. There are no standard systems or process for the conduct of IP audit. The processes for an IP audit vary according to the types of IP owned and administered by the college. The extent and scope of each audit varies with the levels of ownership and commercialization. To assist the colleges in establishing a system and process for IP audit, a checklist is provided as Appendix H. A college officer with specific accountability for IP should develop, maintain and oversee the IP register as a part of college s IP audit process. The officer should be responsible for the registration and maintenance of the college s IP register. The register must contain the following information: description of the IP; ownership details; details of IP clauses contained in any contractors or consultants contracts involved with the development of the IP asset and details of where those contracts can be found; details of IP protection; the status of the current IP protection; the renewal dates for registered IP; details of any IP out on license, including details of the licensee and the nature of the license; details of any IP licensed-in, including details of the license and the costs; details of any IP enhancements developed either singly or in some form of partnership with the college; details of any specific agreements with individual employees involving ex gratia payments or other recognition of extraordinary involvement in creation or development of IP; the costs involved in the creation and commercialisation of any IP; and details of any royalty or commercialisation revenue obtained by the college. Colleges must also audit their own performance in the management and comercialisation of IP. Such audit is helpful in assessing college performance in commercialisation activities and in measuring college attainment in relation to associated benchmarks. To this end, colleges should also audit IP licensedout or sold to third parties. Intellectual Property Management Guidelines for TAFE colleges

38 5.4 FREEDOM OF INFORMATION ISSUES The Freedom of Information Act 1992 requires public authorities, including colleges, to release information upon obtaining requests under this Act in relation to college s IP assets or certain dealing related to IP. In such situations, staff handling these requests must be conscious of the effect of disclosing IP information. Staff handling such requests must refuse disclosure of information pertaining to IP if disclosure may: destroy ability of college to obtain registration of IP; damage or destroy the commercial value of the college s IP assets; prejudice negotiations; and detrimentally affect the college s relationships with the actual or potential licensees or purchasers of IP. Any application under the Freedom of Information Act for information or access to materials to be referred to the college FOI officer. 5.5 FURTHER INFORMATION AND ASSISTANCE Colleges are to obtain legal advice on all agreements, arrangements, contracts and Memorandum of Understandings. Colleges should obtain advice from IP attorneys and agents before any IP is registered or released into public domain. Colleges are advised to vet all legal matters arising from these guidelines. Before entering into any commercial venture, approvals and advice from Treasurer and other relevant authorities are required. These guidelines are not exhaustive and whenever possible colleges are advised to seek and obtain relevant advice on any IP issues arising. Assistance and advice on these guidelines can be obtained from WestOne Services by forwarding the request to: IP Unit WestOne Services 1 Prospect Place WEST PERTH WA 6005 Telephone: (08) Fax: (08) [email protected] Assistance and advice on IP issues is also available from: IP Australia Copyright Council 2nd Floor, East Point Plaza PO Box Adelaide Terrace Strawberry Hills NSW 2012 Perth WA 6000 Phone: (02) Phone: (free call) Fax: (02) Fax (08) [email protected] [email protected] Web: Web: Intellectual Property Management Guidelines for TAFE colleges

39 APPENDIX A:GUIDELINES FOR PRICING INTELLECTUAL PROPERTY DEVELOPED BY TAFE COLLEGES Reproduced copy of Guidelines approved by the then Minister for Training in 2000: Intellectual Property (IP) developed by TAFE colleges using funds sourced from the Department of Training and Employment (which includes all monies derived from Departmental payments to colleges) will be made available on varying terms and with varying restrictions as indicated below. TAFE colleges are free to determine, within the bounds of the law, the availability of IP developed using funds from other sources. Curriculum Curriculum developed by TAFE colleges using funds sourced from the Department will be made available without restriction on the following terms: 1. cost recovery for TAFE colleges (except for curriculum developed using Department of Training and Employment curriculum grants which shall be distributed at reproduction cost to all providers); 2. at a price determined by the TAFE college for other providers. Curriculum which has been jointly funded and developed in partnership with a body other than a TAFE college will be distributed and priced according to the agreement reached between the college and its partner(s). Curriculum developed by TAFE colleges using funds from sources other than the Department may be made available on terms determined by the originating college. However, to maximise access to publicly-funded curriculum, TAFE colleges are expected to price curriculum according to the purchaser's capacity to pay rather than set a fixed price for all providers. TAFE colleges are required to honour any existing licensing agreements for the length of those agreements regardless of these pricing guidelines. Learning Materials Learning materials developed prior to the enactment of the VET Act 1996 on 1 January 1997 will be made available without restriction at a reasonable price (defined as the cost which the market can reasonably bear with an emphasis on at least achieving cost recovery). All these materials should also be made available through Training Publications (WestOne Services). Learning materials developed subsequent to the enactment of the VET Act 1996 on 1 January 1997 will be made available as follows: 1. Learning materials developed using Department of Training and Employment curriculum grants will be made available without restriction at a reasonable price through the Training Publications Unit. The price will be negotiated between the Training Publications Unit and the relevant TAFE college; and 2. Learning materials developed using other funds sourced from the Department may be made available at a price determined by the TAFE college. In determining availability and price, the TAFE college must ensure that the public gains maximum benefit from the expending of public resources. Royalties flowing from the sale of such materials, which are made available through Training Publications, will flow to the originating college. Learning materials developed by TAFE colleges using funds from sources other than the Department may be made available on terms determined by the originating college. Note: Cost recovery is defined as setting the price of a licence no higher than the original cost of developing the IP divided by the number of providers expected to purchase a licence, including the originating college. Intellectual Property Management Guidelines for TAFE colleges

40 APPENDIX B: SUMMARY OF CATEGORIES OF IP PROTECTION 1. PATENTS A patent is granted for inventions (not discoveries or ideas) which are useful, novel and are not obvious to people skilled in the relevant field. A patent provides a monopoly right to manufacture, license, sell, import or use the invention which is protected. The invention can be a new product or process or improvements to existing products or processes. Human beings and biological processes for human reproduction are not patentable inventions, however methods of treating humans may in some circumstances be patentable. Term of protection Standard patent: 20 years from date of filing of provisional specification Innovation Patent: 8 years from date of filing Registration Yes Comments It is important not to publicly disclose an invention (i.e. demonstrate, sell or publicly discuss) before a patent application is made by filing a provisional patent specification or a final specification as to do so will invalidate the inventors right to patent protection Innovation Patents do not protect human beings, plants and animals or biological processes for the generation of these. Innovation Patents are shorter-term patents, which are quicker and cheaper to obtain. Decision to patent : for provides a mechanism to capture and exploit innovation innovation is patentable. secrecy difficult to maintain. to attract funding or finance to commercialise innovation. Decision to patent : against not patentable. short market life. field of innovation or technology advancing rapidly and patent likely to be granted after innovation or technology superseded. very limited monopoly granted. expense. innovation at too early a stage for patenting. secrecy can be maintained indefinitely. Intellectual Property Management Guidelines for TAFE colleges

41 2. COPYRIGHT General description Copyright protects works such as books, reports, computer programs, paintings, sculptures, drawings, photographs, music, film, video, broadcasts, multimedia products. It protects the original expression of ideas, not the ideas themselves and does not protect you against independent creation of a similar work. The copyright owner has the exclusive right to copy, publish, perform, broadcast, sell, license or import copyright protected works. Since the changes to Australian copyright law required under the Australia United States Free Trade Agreement 2005 performers have had additional rights in sound recordings of their performances. In the absence of an agreement to the contrary, the copyright in a sound recording of a performance is owned by both the performer and the person who owns the master recording. Term of protection Duration of copyright protection depends on the nature of the work and whether it has been published or not. Since the ratification of the Australia United States Free Trade Agreement 2005 copyright for literary or artistic works lasts the life of the author plus 70 years from the year of the author s death or from the year of first publication. Copyright for films, broadcasts and sound recordings last for 70 years from their making. Registration No, protection is automatic in Australia. Comments The Copyright Act 1968 provides the Crown with special rights in relation to copyright material. However it is strongly recommended that all contracts include provisions, which ensure that copyright, belongs to the colleges. 3. REGISTERED TRADE MARKS General description A trade mark is a sign used to distinguish goods or services of one trader from those of another. A sign includes any letter, word, name, signature, numeral, device, brand, heading, label, ticket, and aspect of packaging, shape, colour, sound or scent. A trade mark owner has the exclusive right to use the trade mark in relation to particular goods and services, and to sell and license its trade mark rights. Term of protection Initially 10 years, then renewable every 10 years. Registration Yes Comments Trade mark registration should be considered prior to the export of any goods or services. Unregistered trade marks can also be protected, but continuous reputation in the trade mark must be established. The common law action to enforce rights in an unregistered trade mark is called passing off, alternately, actions for misleading or deceptive conduct are available under the Trade Practices Act 1974 (Cth) and the Fair Trading Act 1987 (WA). Intellectual Property Management Guidelines for TAFE colleges

42 4. REGISTERED DESIGNS General description A monopoly right which protects the visual appearance of an article. The design must be new or original. New means not known or previously used in Australia. Original means it has not previously been applied to the article although it may have been applied to another type of article. A registered design owner has the right to manufacture, license, sell or import articles to which the design has been applied. Term of protection Initially 1 year from date of filing. Renewable for three 5 year terms. Total term 16 years Registration Yes Comments A method or principle of construction is not a design. The design must be applicable to an article, which can be manufactured as opposed to being artistic, in which case copyright protection would apply. 5. PLANT BREEDERS RIGHTS General description Plant Breeder s Rights (PBR) are used to protect new varieties of plants, fungal, algal species and transgenic plants provided that the variety is distinct, uniform and stable. PBR gives the owner the exclusive right to produce, reproduce, sell, import, export or license the variety or its reproductive material. Term of protection 25 years for trees and vines and 20 years for other. Registration Yes Comments The use of a protected plant variety to breed other plant varieties, the growing of a protected plant variety to be used as food, or the retention of seed for production of a crop does not infringe a plant breeder s rights. 6. CIRCUIT LAYOUTS General description Circuit layout rights protect original layout design used to build an integrated circuit or computer chip. The owner of an original circuit layout has the exclusive right to copy the layout, manufacture, sell and distribute circuits made according to the layout and license or sell their circuit layout rights. Term of protection Maximum possible period of protection is 20 years Intellectual Property Management Guidelines for TAFE colleges

43 Registration No, protection is automatic Comments The Circuit Layouts Act provides copyright style protection for circuit layouts. 7. CONFIDENTIAL INFORMATION General description Protects trade secrets, confidential information or know-how which is imparted in circumstances suggesting an obligation to keep the information Confidential. Term of protection Indefinite, until the confidential information falls in the public domain or is no longer classified by the disclosing party as confidential. Registration No Comments Keeping information confidential may be difficult in the public sector. Further, enforcing a breach of confidence is complex and costly. Intellectual Property Management Guidelines for TAFE colleges

44 APPENDIX C: SAMPLE LETTERS TO STUDENTS AND INDUSTRY PLACEMENT SUPERVISORS ABOUT STUDENT IP Attention: [Title and name of student] Address Dear [Title and student s name] As you know, [company name] will be providing you with an industry placement opportunity from [beginning date] to [end date]. In regards to any intellectual property (IP) that students may create during the course of their placements, I would like to inform you that generally under the law the companies providing those placements will own the IP unless there is a legally binding agreement to the contrary. This is because the company and student are in an employer-employee like relationship. Examples of the kinds of IP that students may create during placements like yours include [insert relevant examples e.g. designs, planning documents, procedures]. You may wish to negotiate with [company name] regarding rights to the IP you may create during the course of the placement, especially if you will be using any preexisting IP that you own, to create IP during the placement. However, please be aware that the company may refuse your placement if agreement cannot be reached. Please indicate whether you wish to negotiate rights to any IP they may create during the placement by returning the copy of this letter. Yours sincerely [Lecturer s name] I DO / DO NOT wish to negotiate rights to any intellectual property I may create during my placement at [company name] from [beginning date] to [end date].:... Date:... (signature) Student name/title: Address... Intellectual Property Management Guidelines for TAFE colleges

45 APPENDIX D: SAMPLE COPYRIGHT CLEARANCE REQUEST LETTER AND FORM Attention: Company Name Permissions Manager Address... Dear Sir or Madam... The [insert college name] college of Technical and Further Education (TAFE) in Western Australia wishes to develop a [insert type of resource] for vocational and educational studies in the area of [insert course and competency]. These resources will be published in [insert format] format and distributed at cost recovery to the vocational education and training sector in Western Australia primarily, to assist in the conduct of training programs. [As relevant - add any other markets and the basis upon which the resource will be provided to them]. We seek permission to use as part of this development [ an [a number of] extract(s), graphics, etc ] for which we believe you own copyright. The items we are interested in are: [identify material fully by citing title, author, publisher, date of publication, chapter, page etc or Web site URL, organisation, feature etc attach photocopy if appropriate] The resources developed will be copyrighted to [insert college name] TAFE. The rights sought would in no way restrict republication of your work by you or by others authorised by you. If you are willing to grant this permission, we would be pleased to include suitable acknowledgment. It would assist us greatly if you would complete the information below, sign and fax to the person named below as soon as possible. Name Address Telephone Fax [of person requesting permission], [insert college name] TAFE I/we grant permission to [insert college name] TAFE to use the materials requested for the use outlined above and grant to [insert college name] TAFE an irrevocable, royalty-free, world-wide, transferable, non-exclusive licence for the use of these materials:... date:... (signature) Name/title Company... Preferred acknowledgment If you do not own rights to this material would you please let us know to whom we should write for permission. Thank you. Intellectual Property Management Guidelines for TAFE colleges

46 APPENDIX E: LICENSING TRANSACTIONS Major issues to be considered in licensing transactions: Generally, licensing occurs in a commercial context and is tailored to meet the commercial objectives of both parties. It is recommended that a licence is prepared by a suitably qualified person to ensure that all necessary provisions are included. 1. Identify the Parties: (a) names; and (b) addresses. 2. Contract: (a) statement of aims; and (b) commencement and duration. 3. Definitions: (a) contract products; (b) intellectual property; (c) know-how; and (d) licensed territory 4. Grant of licence: (a) type of licence (exclusive, sole or non-exclusive); (b) type of rights granted (manufacture, market); (c) licensed territory; (d) exclusive; (e) non-exclusive; (f) performance obligations; (g) conversion to non-exclusive; (h) failure to meet set targets or pay minimum royalty; (i) right to sub-licence; and (j) warranties. 5. Transfer of materials, data, know-how: (a) description of materials, data, know how provided; and (b) training requirements (if relevant). 6. Production: (a) requirements; (b) materials; (c) packaging; and (d) quality control and inspections. 7. Marketing: (a) licensee to use best endeavours; (b) use of trade marks (if relevant); (c) advertising and promotion of contract products; and (d) product liability and indemnities. 8. Financial arrangements fees and royalties (a) royalties: (i) base; (ii) amount; (iii) fixed or sliding; (iv) lump-sum (up-front) or running (b) cessation of royalty; (c) minimum royalties; and (d) method and currency of payments 9. Approach to improvements: (a) definition; (b) licence or assignment; (c) reciprocity; and (d) royalty-free or royalty-bearing. 10. Identify intellectual property: (a) obligations in relation to maintenance or defence of IP rights; and (b) assignment and reassignment of IP rights(trade marks). 11. Confidentiality: (a) obligations to be imposed; (b) duration; (c) cessation; (d) scope; and (e) safeguard confidential information 12. Termination of agreement: (a) expiry; (b) renewal (if appropriate); (c) circumstances in which agreement terminates; and (d) reasons for premature termination. 13. Post-termination (a) obligations on the licensee; (b) pay outstanding licensor fees and royalties; (c) confidentiality obligations; (d) return drawings, manuals, etc; and (e) reassignment. Intellectual Property Management Guidelines for TAFE colleges

47 APPENDIX F: COPYRIGHT CLEARANCE FORM FOR COLLEGE IP. college of TAFE grants permission to.. (company/organization) to copy/use the following material for the purposes identified in your letter of Source: (Name of IP article e.g. book, pamphlet etc) Item(s): (Component required) Special conditions (if any) Copyright fee (if any)... Preferred acknowledgement to read: Permission authorized by: (Name of Officer with relevant delegated authority) on behalf of. college of TAFE. Date: / / Intellectual Property Management Guidelines for TAFEWA colleges Version

48 APPENDIX G: IP ADMINISTRATION CHECKLIST The following checklist is provided to assist TAFE colleges to determine how best to structure their management arrangements for the administration of their IP activities. Clearly allocate authority for various IP related decisions and activities as outlined in these Guidelines. Ensure that the staff allocated with the responsibility are suitably skilled and trained. The Management and Councils of colleges should ensure that they are aware of IP commercialisation activities being undertaken by the college and that these activities are conducted in a consistent manner. A fully distributed model of IP administration within internal college divisions, operating independently from each other, is not recommended. Recommend that IP commercialisation activities be conducted through a central unit either within a college, or through an external unit, for example WestOne Services or a unit outside government. This is essential to ensure consistency of approach in IP management. IP commercialisation is a business development function involving close collaboration with industry but which should be focussed on generating benefits back to the college. These benefits will often be linked to the area within the college which generated the IP and the IP is likely to be more successfully commercialised with the involvement of the originators of the IP. IP management tasks such as maintenance of IP registers, staff awareness, copyright clearances and non-commercial sharing of IP, may be better handled through a central functional area within the college. IP administration will need to be well linked with both internal management functions of the college and the college s external industry-focussed activities. Unless a special IP administration branch is established within a college which can have both an internal and external focus, colleges should consider splitting the administration of IP into an internally focussed element and an externally focussed business development element with clear and effective links between the two elements. Intellectual Property Management Guidelines for TAFEWA colleges Version

49 APPENDIX H: IP AUDIT CHECKLIST 1. BACKGROUND ANALYSIS Examine the activities of the college and related IP the college is likely to create and manage. Examine the structure and administrative procedures of the college to incorporate the IP audit process. Analyze and identify the laws and policies relevant to different IP rights. Familiarize and create awareness among staff about the different laws, policies and guidelines concerning the creation, management and commercialization of IP. Prepare IP asset identification sheets for staff to complete. Prepare and develop IP asset register and IP commercialization register. 2. AUDIT EXERCISE Identify and categorize the existing IP assets the college owns or manages. Identify and categorize the different IP the college is likely to generate. Staff within the college to complete IP asset identification sheets. The asset identification sheets to contain the following information: (a) Details of person completing sheet (name, position, department etc). (b) General description of the IP asset (type of asset and operational function). (c) Type of IP Protection: (Copyright, Patent, Trade mark (Registered and unregistered) Design etc). (d) Ownership (the college or the State/other/unsure). (e) Registration details (if any). (f) Importance to the college (High, Moderate, Low). (g) Risk level (High, Moderate, Low). (h) License details (if any). Provide information sheets and training to the staff to identify and evaluate IP assets. Provide motivation and details of rewards for staff generating IP. IP asset registers to include: Computer programs developed for the college s specific needs. Print publications/promotional materials currently sold or provided free of charge. Databases maintained by the college. Television and radio advertising material developed by or on behalf of the college. Artwork, photographs commissioned and used in promotional material by the college. Computer programs licensed in by the college. Training materials developed by the college. Trade marks or logos used by the college whether or not they are registered as trade marks or business names. Patented inventions. Registered designs. Intellectual Property Management Guidelines for TAFEWA colleges Version

50 Registered plant varieties. Integrated circuit boards designed by or for the college. SWOT analysis of the commercialized IP asset. Colleges to have an IP commercialization register which includes the following: (i) Description of IP; (ii) Ownership details; (iii) If contractors or consultants are involved with the development of the IP asset, details of IP clauses contained in their contracts and details as to where those contracts can be found; (iv) Details of IP protection; (v) Status of current protection of the IP; (vi) Renewal dates for registered IP; (vii) Where IP is licensed, details of licensee, nature of the license; (vii) Where IP is licensed in: details of license, costs; (viii) Details of enhancements (if any) of any IP developed either singly or in some form of partnership by the college; (ix) Details of any specific agreements with individual employees involving ex gratia payments or other recognition of extraordinary involvement in creation or development of IP; (x) (xi) Costs involved in the creation and commercialization of IP; and Details of any royalty or commercialization revenue obtained by the college. Intellectual Property Management Guidelines for TAFEWA colleges Version