DGD15-025

Policy

Intellectual Property

  1. Policy Statement

1.1 ACT Health encourages and values health innovation and research with the aim of improving the health of the community and the quality of care.

1.2All Intellectual Property (IP) that is created as a direct consequence of health service administration and provision, or acquired by ACT Health,could have commercial or reputational value beyond its immediate health value. ACT Health will:

  • Identify and protect IP that is created or acquired, and which has been determined to have value for the organisation;
  • Establish an IP committee to manage its IP interests.

  1. What is Intellectual Property?

2.1IP refers to the rights granted by law for the results of creative human effort and economic investment in the creative effort.

2.2IP in a broad sense includes:

  • Inventions and patents granted in respect of such inventions and applications of such patents;
  • Unpatented know-how which comprises an invention ora way of doing something which is not public knowledge;
  • Confidential information and trade secrets;
  • Registeredandunregistered designs and applications for registered designs;
  • Copyright;
  • Circuit layout rights;
  • Registeredandunregistered trademarks and applications for registration of trademarks;
  • Plant variety rights;
  • All other rights resulting from intellectual activity in the scientific, industrial, literary or artistic fields; and
  • Any contractual rights to use or exploit any of these rights.

  1. Purpose

3.1The purpose of this Policy and the associated Standard Operating Procedure (SOP) is to outline the governance, management, protection and potential commercialisation of ACTHealth IP, including the role of the Contracts and Intellectual Property Office.

  1. Scope

4.1This policy applies to all:

  • IP which arises or may arise from Health research; health service administration and provision and/or acquisition by ACT Health.
  • ACT Health staff, including staff:
  • Employed under contract;
  • Paid for by ACT Health but whose work is administered by another entity;
  • Employed by ACT Health and who are using other institutions’ resources and/or are located off-site from ACT Health;
  • Not employed by ACT Health but who are carrying out work using ACTHealth resources or assets.
  • Students, Visitors and/or Independent Contractors, including:
  • Visiting or contracted medical officers;
  • Visitors from research and academic institutions with which ACT Health may enter into agreements;
  • Independent contractors.
  • Public health organisations within ACT Health and within the meaning of the Health Act 1993.

4.2This Policy does not apply to:

  • IP which arises in the course of ACT Health’sdirect service provision. For example, pathologyand public health testing undertaken on behalf of commercial interests for a fee;
  • Commissioned works performed for a true commercialfee. The IP in such work is governed by the terms of the commissioning agreement.

  1. Governance Arrangements

Establishment of the Contracts and Intellectual Property Office

5.1A Contracts and Intellectual Property Office (CIPO) has been established within ACTHealth. The CIPO will assess, govern and manage all IP that is either fully or jointly owned by ACT Health.

5.2The CIPOwill be responsible for:

  • Promotion and implementation of the IPPolicy and SOP;
  • Providing advice to ACT Health staff on IP rights and responsibilities;
  • Hosting IP Awareness Seminars for ACT Health;
  • Providing advice to the ACT Health IP Committee;
  • Managing IP to benefit the ACT public health system;

5.3Further detail on the role of the CIPO is set out in detail in the IP SOP.

ACT Health Intellectual PropertyRegister (IP Register)

5.4The IP Register identifies and records the details of all IP and is maintained and reported on by the CIPO to the IP Committee. All actual and potential IP must be reported to the CIPO in the first instance.

5.5As a minimum, the Register will include the following information:

  • Description of the IP and area responsible for managing it within ACTHealth;
  • IP Creator and ownership details;
  • Status of IP protection, e.g. patent pending, copyright etc;
  • Renewal date for registered IP (if applicable, eg. for patents);
  • Where the IP is licensed, details of any licensor or licensee that is not the Territory.

  1. Identification and Protection of IP

6.1Most procurement of goods and services by ACT Health will not involve IP, but where a contract is effectively for ‘sale’ of something contributed by ACT Health, including its knowledge resources, it is essential to consider how any associated IP will be protected, whether or not a specific value is attributed to any component of the contract.

6.2IP may be created, assigned to, or acquired in the followingways:

  • Through the use of ACT Health resources;
  • Through the provision of health care and health related services, including administration and serviceprovision and research;
  • IP creationby ACT Health staff during the course of their employment;
  • IP assigned to, or acquired by ACT Health.

6.3The identification of IPis an important aspect of IP management.Therefore the description, owner, value and level of protection must be ascertained early.

6.4ACT Health will protect IP in a number of ways depending on its form. The form of IP will determine which legislative regime applies to it and what steps need to be taken to protect the IP.

6.5In relation to some forms of IP, such as inventions or innovations, public disclosure prior to registration of the IP may jeopardise ACT Health’s ability to register it. It is paramount that such IP is kept in strict confidence.

6.6Following acknowledgement of the commercial potential of IP (by the CIPO or ACT Health IP Committee), IP Creators have an on-going obligation to advise the CIPO of the current status of ongoing works and whether any third party has access, or has sought access, to it.

6.7If required, the CIPO will arrange for preparation and execution of the essential confidentiality deeds with third parties. It will also take into consideration the agreements and arrangements that currently exist between ACTHealth and staff, visitors and independent contractors.

6.8In no case is an employee to take steps to apply for any registration of IP created in the course of their employment in his or her own name (eg file a patent application, or lodge an application for registration of a design etc.), unless ACT Health has assigned the intellectual property to him or her.

  1. Roles & Responsibilities of ACT Health Staff

7.1TheDirector-General is responsible for:

  • Encouraging health research and the acquisition and dissemination of knowledge and skills;
  • Fostering an environment for IP issues to be identified and developed;
  • Recognising and rewarding ACT Health staff for innovation;
  • Establishing an ACT Health Intellectual Property Committee;
  • Establishing an ACT Health Contracts and IP Office;
  • Approving any proposed contracts or other agreements involving the commercialisation, sale or use of ACT Health knowledge assets;
  • Determining the course of action to be taken relating to a dispute in relation to IP.

7.2ACT Health Executive staffare responsible for:

  • Encouraging health research and the acquisition and dissemination of knowledge and skills;
  • Ensuring that staff are aware of their responsibilities in relation to the identification and protection of ACT Health IP;
  • Fostering an environment for IP issues to be identified and developed;
  • Recognising and rewarding ACT Health staff for innovation.

7.3ACT Health staffare responsible for:

  • Identifying IP to be included in the ACT Health Intellectual Property Register;
  • Notifying the CIPO of any IP that is created in the course of their employment;
  • Being aware of their responsibilities relating to the identification and protection of ACT Health IP rights.

Note: The Director-General has sole responsibility for committing ACT Health to contractual relations (this is different from delegated authority for procurement, expenditure);

7.4ACT Health Intellectual Property Committee (IPC) is responsible for:

Administering the ACT Health IP Policy and associated SOP to ensure efficient governance and management (including by way of protection and commercialisation as appropriate) of the knowledge resources of ACT Health;

  • Developing, protecting and optimising (including marketing and promotion) of the IP portfolio of ACT Health;
  • Overseeing governance, management and review of all intellectual property assets and related matters;
  • Devisingand promoting appropriate activities across ACT Health that will enhance awareness and education of intellectual property issues;
  • Periodically reviewing and making recommendations to the ACT Health Executive Council as appropriate.

  1. Evaluation

8.1Outcome Measures

  • All IP generated is notified to the CIPO and reviewed to determine and manage ownership and commercialisation where appropriate
  • IP with a potential commercial value is managed to benefit the ACT public health system.

8.2Method

  • The CIPO will review notifications and management processes and provide ongoing compliance monitoring.
  • ACT Health IP and any revenue generated by associated commercialisation will be reported annuallyto the Director-General.

  1. Related Legislation, Policies and Standards

9.1Legislation

Copyright Act 1968

Crimes Act 1900

Designs Act 2003

Financial Management Act 1996

Patents Act 1990

Public Sector Management Act 1994

Trademarks Act 1995

9.2Policies

Director-General’s Financial Instructions

Procurement Guidelines

9.3Standards

N/A

  1. References

10.1 - IP Australia is the Australian Government agency responsible for administering patents, trademarks, designs and plant breeder’s rights.

Earlier republications

Since 1November 2014 every authorised republication has been published in electronic pdf format on the ACT Health policy register.

Republication No and date / Effective / Last amended to

Disclaimer: This document has been developed by ACT Health, specifically for its own use. Use of this document and any reliance on the information contained therein by any third party is at his or her own risk and Health Directorate assumes no responsibility whatsoever.

Doc Number / Issued / Review Date / Area Responsible / Page
DGD15-025 / May 2015 / May 2018 / Office of DDG, S&C / 1 of 6
Do not refer to a paper based copy of this policy document. The most current version can be found on the ACT Health Policy Register