Managing your intellectual property - practical implications

The Intellectual Property Guidelines (Guidelines) support the Whole of Victorian Government Intellectual Property Policy Intent and Principles (IP Policy). The IP Policy sets out the State's approach to managing IP. The IP Policy and Guidelines apply to all departments and public bodies.

IP requirements

The intent behind the IP Policy is that the State grants rights to its IP in a manner that maximises its impact, value, accessibility and benefit consistent with the public interest and acquires third party IP rights in a transparent and efficient way. Importantly, whilst the Policy and Guidelines emphasise that the State is not in the business of commercialising IP in order to generate financial returns, managing IP - or failing to do so - can have practical ramifications.

IP rights arise in connection with much of our work whether carried out directly by public servants or by contractors engaged by the State. The material in which IP rights may reside includes written material, software code, scientific discoveries, trademarks and designs.

The IP Policy requires agencies to identify and record IP in their possession where it:

• involves statutory registration and renewal processes
• is critical to a deliverable or core function of the agency
• requires active risk management

Avoiding risk

Ensuring that agencies have the appropriate IP rights to use material developed under contracts to obtain goods and services is important to enable the State to carry out its functions. Further, agencies may need to continue to use the material supplied under these contracts, such as software, reports and manuals, even after the contracts expire.

Agencies are therefore encouraged to establish an IP register to record information of significant IP of an agency beyond that which might be recorded on an agency's asset register. This is important strategically, as it allows agencies to know at a corporate level what significant IP they own or are licensed to use. When processes are not in place to ensure agencies are aware of the IP they own under agreements, or they do not have mechanisms to facilitate use and access, IP can become 'locked up' and less likely to have its potential as a public asset fully realised.

The other risks of poor IP management include the hazards that an agency’s IP may be stolen or misused, or that the agency may misuse someone else’s IP. Liability risks and the loss of opportunities can also arise.

Contact our team

For advice on technology issues in a Victorian public sector context, contact:

Bea Stathy, Managing Principal Solicitor
bea.stathy@vgso.vic.gov.au

You can also contact one of our technology team members.