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 (ipunit.westone@det.wa.edu.au). 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