Western Australia’s new Intellectual Property Policy encourages commercialisation and innovation

28 September 2023

Western Australia (WA) has recently introduced its updated ‘global best practice’ Intellectual Property (IP) Policy which identifies IP as a State asset. The policy is set to promote innovation, create new jobs, and facilitate investment in opportunities within WA.

The intention of the policy

The policy identifies that WA government agencies can optimise the benefits of IP through commercialisation and provide a pathway for State government agencies to secure protection for various kinds of IP rights. The key aims of the policy are to:

  • consider commercialisation of IP where it is financially viable;
  • review opportunities that will provide benefit to the WA government;
  • ensure the incorporation of IP provides positive outcomes for the State and community; and
  • recognise and reward employee innovation.

Who does the new policy impact?

The new policy calls for all agencies within the public sector in WA to review and amend their current IP policies and contracts involving use of IP to ensure alignment with the new requirements.

Per the Public Sector Management Act 1984, agencies within the public sector include all WA State agencies, ministerial offices as well as State Emergency Services (SES) agencies and non-SES agencies. The policy is not applicable to the Police force, the four public WA universities, local government, and councils. Despite these entities not being required to implement the new policy they are still encouraged to adopt its principles where viable.

How should the policy be implemented?

Agencies are advised to take an agency-specific approach to implementing the policy. This can be achieved through considering how the following can be integrated into an existing policy:

The management and protection of IP

All agencies should consider IP management strategies that are consistent and accountable. This can be achieved through:

  • identifying and registering IP that has significant value;
  • maintaining a register of IP rights; and
  • periodically conducting an audit of IP.

Clarification of IP ownership

While the State typically will own IP that is created by its employees and contractors this may not always be the case. Therefore, it is pertinent to define who owns IP rights in the contract formation stage. This can be achieved through reviewing current contracts that involve the creation and use of IP. With specific consideration given to:

  • the IP rights that are affected;
  • identifying a clear understanding of the relevant research and development required of an employee or contractor; and
  • creating a definition of the resulting ownership and use of the IP rights that may emerge through research and development.

The commercialisation of IP

WA is pushing for commercialisation as this is the most effective way to capitalise on the benefits that come with exclusive IP rights ie business profit and growth.

The policy suggests that in instances where it is commercially viable after undergoing the appropriate pre-assessments, IP should be commercialised. There is not a clear definition of what would constitute commercially viable, noting that this would rely on several factors specific to the agency.

The factors considered in pre-assessment should be inclusive of:

  • an agency’s strategic goals, policies, and priorities;
  • a cost benefit analysis; and
  • seeking out expert financial and legal advice.

Recognition towards employee innovation of IP

As stated above, in most circumstances the State agency will own the rights to any IP, created by employees or contractors. The new policy is encouraging agencies to recognise and reward employee and contractor innovation. Agencies have discretion on how they wish to compensate employees and contractors.

The policy provides scope on how an agency can award its employees and contractors with monetary and non-monetary rewards. Monetary rewards may include periodic payments or lump sum cash payments. While non-monetary rewards may include public acknowledgement and recognition, providing specific time and resources towards the creation of IP and/or study programs and professional development.

In addition to implementing the policy, internal State agency policies are required to be widely communicated and readily available to employees, contractors, funding, and grant recipients.

A brief overview of other State policies

Most Australian States have their own frameworks to guide the use, generation, acquisition, and management of IP within their government agencies.

WA’s IP policy is currently the most comprehensive and places a strong focus on innovation and commercially beneficial outcomes when compared to other state policies. South Australia, New South Wales and Queensland have the most similar policies where they encourage the commercialisation of IP where its benefits outweigh the public maintaining open access. However, commercialisation is not viewed as a main priority.

Victoria is the outlier state which explicitly outlines in its policy that it is not in the business of commercialising IP for financial return. Tasmania has a brief policy which outlines that the State owns public sector IP but does not indicate that it is interested in commercialisation. The Australian Capital Territory and the Northern Territory do not have similar statewide IP policies.

The key takeaway

With the introduction of its new IP policy, WA is leading the way in its use of IP as it is recognising the value to be gained through commercialising IP and how this provides commercial benefits to a State.

WA State agencies should now start implementing the required policies and procedures into their internal organisational policies. Where internal IP policies are updated, all impacted parties should be notified and provided access to the new expectations. Private sector businesses who contract with WA public sector agencies should be aware of the new expectations and capitalise on new opportunities that the policy may provide them.

This article was written by Luke Dale, Partner and Carmen Marino, Law Clerk.

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