Intellectual Property Management in WA Health

Applicable to: Statewide

Description: The Circular informs WA Health staff of the State government’s intellectual property (IP) policy and specific IP management and reporting procedures in WA Health.

Intellectual Property Management in WA Health

Background

The Western Australian Government Intellectual Property Policy 2015 provides a policy framework for the protection, management and commercialisation of Intellectual Property (IP) generated with State Government resources. The policy recognises that IP created within Government agencies is a major potential source of value to the Western Australian economy and community. The Government's aim is to actively seek to optimise the economic, social and environmental benefits to Western Australians from the use and commercialisation of IP, in conjunction with the business community. 

In accordance with the policy, Government agencies in conjunction with recipients of government resources should ensure that: 

  1. IP assets, including data, created with government resources are identified, captured, suitably protected, responsibly managed, and transparently disposed of according to the key principles outlined in this policy
  2. Rights to IP created with government resources are allocated to optimise the economic, social or environmental benefits for the State from the use, commercialisation and disposal of the IP
  3. Employers and employees are encouraged to meet core operational objectives through creativity and innovation which may result in valuable and useful IP being developed and commercialised
  4. Employees are recognised for their involvement in the development of IP. 

The Department of Health strongly supports this approach to the management of health sector IP, recognising the great value that innovation and commercialisation can have in both advancing health care delivery and optimising the return on the State Government's investment in health. 

Protection of WA Health IP

IP is the tangible representation of intellect and creativity. There is wide diversity in the type of IP that is being generated in WA Health. The rights to IP generated in the course of normal working activities, or logical extensions of these (this can include activities undertaken offsite and/or after hours) are generally vested in the employer. 

The OD 0383/12 WA Health Code of Conduct states: “(Staff are to) 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”. 

IP usually arises as a consequence of the core activities of the sector and, if value is to be added, some form of protection generally must be invoked if the IP is considered to have strategic or commercial potential. The level of protection will depend upon the intrinsic 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 are to be used in WA Health are:

Copyright: protects the original expression of ideas (not the ideas themselves). This includes written works, internet and multimedia presentations, computer software, business management systems, etc. Copyright is automatic, whether explicitly claimed or not (ie 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”.

Patents: 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. 

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. 

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. Is registrable and has associated costs.

Trade secret: proprietary knowledge (know-how) and other confidential information. Non-registrable, no direct cost, but is of limited application in the public domain. 

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.

Employee Rewards

To encourage best management practices and innovation across the Western Australian Government, the Department of Commerce, in consultation with the Department of Treasury, is developing a framework that will detail how the benefits derived from intellectual property should be shared.

Until the new framework is developed and approved the existing employee reward procedures Encouraging Innovation by Government employees: Procedures for the payment of monetary rewards to innovative Government employees continues to apply. 

IP Management in WA Health 

The Department of Health has established an intellectual property management strategy for WA Health that aligns with the WA Health Strategic Intent 2015-2020 enablers of ‘financial management’ and ‘research and innovation’ 

The first point of contact for any IP issues would be the research administration office or equivalent at your site of work. When necessary the Research Development Unit (RDU), Department of Health, should be the next point of contact for the protection and commercialisation of IP in WA Health. 

The RDU can assist IP developers and managers in the following ways:

  • Providing general advice on IP management in WA Health, and assisting with specific questions and issues related to IP developed in WA Health
  • Obtaining expert advice on IP valuation and paths to commercialisation (including establishment of recording, reporting and non-disclosure procedures)
  • For materials protected by copyright and which have potential commercial value (eg software, training manuals, patient or business management tools, etc), the establishment of licence agreements prepared in conjunction with Legal and Legislative Services (LLS) or the State Solicitors Office (SSO)
  • Obtaining Executive authorisation for progression of IP through commercialisation stages
  • Provision of funds, subject to approvals, for the limited support of very early stage commercial development of IP (e.g. establishment of a business case, assessment of commercial value, assistance in reaching the "proof of concept" stage, initial patent attorney costs and provisional patent application costs)
  • Provision of template IP clauses to be included in contracts with external parties. Any modifications to standard IP clauses should be prepared and approved by LLS or SSO
  • Provides opportunity to support commercial IP development through the Medical Research Commercialisation Fund.

Medical Research Commercialisation Fund (MRCF)

The Department of Health is able to offer WA Health researchers the opportunity to apply for MRCF funding for early stage development and commercialisation of intellectual property. 

The MRCF is a pre-seed investment fund which aims to address the existing funding gap between the development and commercialisation of biomedical research. In addition to development funds the fund managers are able to provide professional commercialisation advice, including patent and project management support. 

Further information is available at the MRCF Website (external site)

More Information

For information on IP management in WA Health visit the Research Development website:

http://ww2.health.wa.gov.au/Health-for/Researchers-and-educators/Intellectual-property

Or contact the Research Development Unit, Department of Health

Email: Neil Lynch, Senior Policy Officer RDU
Phone: 9222 4053
Post: PO Box 8172 Perth Business Centre, Perth 6849
Address: Level 2, Block C, 189 Royal Street, East Perth 6004


Professor Gary Geelhoed
ASSISTANT DIRECTOR GENERAL - CLINICAL SERVICES & RESEARCH/ CHIEF MEDICAL OFFICER
CLINICAL SERVICES & RESEARCH

Date of effect: 12 October 2015 to 12 October 2020

Policy Framework