Intellectual Property

The rights to intellectual property (IP) generated by public sector employees in the course of their normal working activities, or logical extensions of these (this can include activities undertaken offsite and/or after hours) are generally vested in their employer.

The OD 0383/12 WA Health Code of Conduct (external site) states: '(Staff will) Protect and responsibly manage the intellectual property developed in, or used by, WA Health. The intellectual property we create in the course of our employment may remain the property of WA Health.'

It should be emphasised that even when commercialisation of IP is not contemplated, the enforcement of IP rights may be necessary to discourage potentially inappropriate use of the material by other parties.

Background intellectual property

This is IP that pre-exists in WA Health, and that might be used in the generation of new IP by a third party. WA Health staff must ensure that the rights to this background intellectual property are protected (for example, through appropriate IP clauses in service contracts), as WA Health might find itself having to pay the other party royalties to use the same background IP in the future.

Third party intellectual property

WA Health staff must make every effort to identify and acknowledge any third party IP that they might use, and avoid any infringement of the IP rights of the other party(ies). This also applies to material that carries no evident ownership disclaimers, such as can be downloaded from the internet.

IP protection

The level of protection invoked for a particular innovation will depend upon the strategic value of the IP and its commercialisation potential. The costs of protection must be considered in the light of an assessment of this value. The most usual forms of protection that will be used in the State health system are:

Copyright

This protects the original expression of ideas (not the ideas themselves) and includes written works, internet and multimedia presentations, computer software, business management systems, etc. Copyright is automatic, whether explicitly claimed or not (that is, does not require formal registration), and is free of charge.

A copyright disclaimer should be added to all publications produced by WA Health, whether in printed or electronic form. The copyright disclaimer should use the following wording:

"Copyright to this material is vested in the State of Western Australia unless otherwise indicated.

Apart from any fair dealing for the purposes of private study, research, criticism or review, as permitted under the provisions of the Copyright Act 1968, no part may be reproduced or re-used for any purposes whatsoever without written permission of the State of Western Australia."

Generally, no revenue is to be accepted by WA Health staff for contributions to externally published materials. Note that individual authors are not normally named on materials produced by WA Health (excepting publications in STM journals).

Publishing rights

Researchers should be allowed to freely disseminate the results of their work. This will not, however, apply if the research outcomes have confidentiality restrictions, are patentable or may have commercialisation potential.

Patents

These provide time-limited monopolies over commercial exploitation of inventions or innovations that have acceptable degrees of novelty, usefulness and appropriateness. These require strict formal registration procedures, and incur costs that can be quite high and often outside the core funding activities of government agencies. Particular care must be taken with respect to prior use or public disclosure of the invention or innovation, and in some circumstances, the establishment of "first to invent" status. This is a highly sensitive and complex area, and specialist advice should be sought, and appropriate procedures instituted, before a potentially inventive project is initiated.

Trademark

Something that is used to distinguish goods and services of one trader from those of another. It is registrable and has associated costs.

Design

Protects the appearance of products. It is registrable and has associated costs.

Trade secret

Proprietary knowledge (know-how) and other confidential information. It is non-registrable and has no direct cost, but is of limited application in the public domain.

Research and Innovation Office and IP

The Department of Health has established an intellectual property management strategy for WA Health that aligns with the third pillar of the Strategic Intent for WA Health: Making the best use of funds and resources.

The Research and Innovation Office (RIO) facilitates the responsible management of IP in WA Health and is the central point of contact for IP advice and assistance in WA Health.

The RIO:

• contributes to the identification and protection of significant WA Health IP
• provides IP education and awareness to WA Health
• assists in IP agreements with external parties, for example collaborations, contracts and grants
• provides opportunity to support commercial IP development through the Medical Research Commercialisation Fund.

More information

• Research and Innovation Office
  Department of Health
  Neil Lynch, Senior Policy Officer RIO
  Phone: 9222 4053
  Post: PO Box 8172 Perth Business Centre, Perth 6849
  Address: Level G, C Block, 189 Royal Street, East Perth 6004