IP in Government Contracts Under the Whole of Victorian Government Intellectual Property Policy

What is IP? IP may apply to intellectual activity and creations. To foster innovation, the law provides some creators with certain exclusive rights over their creations, for a certain amount of time. Includes copyright, patents, trade marks, designs, circuit layouts and plant breeders rights.

How might IP issues arise in contracts? Type of contract 1.Procurement of goods 2.Procurement of services 3.Procurement of software 4.Consultancy services 5.Provision of grant IP related deliverables 1.Designs, inventions, parts, specifications 2.Reports, inventions, websites, brands 3.Software code, manuals, specifics, data 4.Training packages, discussion papers, reports 5.Reports, research, inventions, client data

IP in contracts

WoVG IP Policy Endorsed by Government in August Policy Intent: State grants rights to its IP to maximise impact, value, accessibility and benefit consistent with the public interest. State uses third parties IP in a transparent and efficient way, while upholding the law and managing risk appropriately. Significant principles: (1) State manages its IP consistently, transparently and accountably. (2) State grants rights to its IP with the fewest possible restrictions. (3) State may exercise its IP rights restrictively in limited circumstances (e.g. privacy, security, public health, commercialisation). (7) and (8) State not in the business of commercialising its IP and may only do so with statutory function or Assistant Treasurers approval.

WoVG IP Policy – Procurement and funding Principle (9) Procurement of goods and services. Principle (10) Funding and grants. The State: Addresses IP rights in agreement. Secures a licence to the IP only to the extent necessary to achieve the purposes of the procurement (procurement) or does not secure a licence except to the extent required for a stated purpose (funding). Only acquires ownership of the IP if a licence is not adequate in the circumstances.

Considerations for contract managers What IP arises in the contract? Including background IP, third party IP and project IP. For project IP… Is a licence required? Is securing a licence necessary to achieve the purpose of the procurement? For example, would you need to provide software code to a third party for repair or maintenance? Have you defined the scope of the licence with a stated purpose? Have you dealt with exclusivity, territory, term and sublicence rights?

Considerations for contract managers For Project IP (continued)… Is ownership required? Is ownership consistent with the IP Policy? For example, will ownership maximise the value and accessibility of the IP to the public? Have you considered whether a licence would be sufficient? Will retaining ownership increase the cost of the procurement? Be aware of variations and contract end.

Case study ICT contract. Contractor owned IP in software. Agency did not gain licence over IP. Agency was unable to repair or maintain software, or engage third party to do so.

Further information IP Policy Guidelines IP Policy website: Economy/Victorian-Government-Intellectual-Property- and-data-policieshttp:// Economy/Victorian-Government-Intellectual-Property- and-data-policies Contact us: Richard Vinciullo (Manager) Jodee Cook (Senior Manager)

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