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Intellectual Property Management SOP
Intellectual Property Management SOP
1.1 This standard operating procedure (SOP) and the associated Intellectual Property (IP)
policy outlines ACT Health procedures relating to the identification, governance,
management, protection, and potential commercialisation of ACT Health’s IP.
2. Scope
IP which arises or may arise from health research; health service administration
and provision and/or acquisition by ACT Health.
Public health organisations within ACT Health and within the meaning of the
Health Act 1993.
3. Establishment and Role of the ACT Health Contracts and Intellectual Property
Office (CIPO)
3.1 A Contracts and Intellectual Property Office (CIPO) has been established within
ACT Health. The CIPO will assess, govern and manage all IP that is either fully or
jointly owned by ACT Health.
3.2 The CIPO will be the central point of contact for advising on IP ownership, dealing
with all knowledge contracts, negotiating and managing the contract terms and IP
within them.
3.3 The CIPO will use the Guidelines for Determining IP Ownership provided at
Attachment A to guide ACT Health employees and the IP Committee on matters
pertaining to protection and possible commercialisation of ACT Health IP. If you
consider your IP situation is not covered by any of the scenarios included in
Attachment A, contact the CIPO for further advice on how to proceed prior to
entering into any contractual negotiations or arrangements.
3.4 Where there is more than one creator, the CIPO shall obtain a written agreement as
soon as possible from each Creator as to the relative contribution of each of them to
the creation of the IP.
3.5 Where protection and/or commercialisation of IP is to proceed, the CIPO will consult
with the ACT Health Executive in charge and IP creator regarding appropriate
protection and commercialisation strategies.
3.7 If the CIPO and the ACT Health Executive in charge determine that protection and/or
commercialisation of the IP should not proceed, the CIPO will refer the matter to the
IP Committee to consider a further recommendation that the:
IP be retained by ACT Health, but that the Creator(s) be allowed to act as agent
for the public health organisation solely for the purpose of seeking commercial
partners, with ACT Health agreeing to participate in negotiations with such
commercial partners (if found) regarding commercialisation.
3.8 The appropriate recommendation will depend upon the circumstances of the case
and the creator(s) should be consulted in this regard.
4.1 ACT Health employees must notify the CIPO as early as possible of the anticipated
creation of any work, product or process undertaken in the course of their
employment, which may have commercial application.
4.3 Notification must be made in writing, in the first instance, marked as ‘confidential’
and must identify:
the work, product or process in detail
each person involved in the creation of the work, product or process
the period in which the work, product or process was created
the research project or program in the course of which the work, product or
process was created, and
any known details as to the likely commercial significance of the work, product or
process.
4.4 The CIPO may request further information if information provided in the initial
notification is insufficient to manage potential IP.
4.5 Notifications are to occur whether employees are carrying out the work alone or with
other ACT Health employees, or as part of a collaborative project with visitors or
persons from other organisations.
4.6 In no circumstance are employees to take steps to apply for any registration of IP
created in the course of their employment in their own name, the name of a
company or any other person (e.g. file a patent application, or lodge an application
for registration of a design etc.), unless the IP has been assigned to them by
ACT Health.
Commercialisation
5.2 ACT Health may contract an organisation or individual (not being an ACT Health
employee) to commercialise ACT Health IP on the Territory’s behalf. Arrangements
of this kind will vary in their terms and conditions, and may or may not involve the
following aspects:
Assignment of the IP to the commercialising entity;
Provisions for profit sharing with Creators (rather than relying on the royalty
model described in the IP policy of the public health organisation).
5.3 Where such arrangements are entered into, the CIPO will ensure that the return to
the organisation is equitable, and that any profit sharing arrangements with
employees do not disadvantage employees by providing a lesser entitlement than
that envisaged by this policy. The advice of the Committee may be sought in relation
to such arrangements.
5.4 In many ‘two or more-party arrangements’ the parties concerned must negotiate IP
rights, usually by reference to their varying levels of contribution on a case-by-case
basis and following legal advice as required.
6.1 When an agreement is required to define the terms under which ACT Health
materials, facilities and resources will be utilised, these agreements will include an IP
Facility Loading of up to 35%, where the CIPO deems it appropriate to do so, to be
paid by the partner organisation.
6.2 The CIPO will determine on an individual basis whether it is appropriate to include
the IP Facility Loading into an agreement, in consultation with the Director-General,
following discussion with the relevant ACT Health staff member and the partner
organisation.
6.3 The CIPO will take into consideration a number of factors in determining whether a
Facility Loading will be appropriate, including whether a concessional rate is more
appropriate.
6.4 Funds received through the Facility Loading will be held in a separate special purpose
and access account, to be managed from the Office of the Deputy Director-General,
Strategy and Corporate.
7.1 Following assessment and recommendation by the CIPO, all the relevant
documentation will be sent to the Director General for approval and sign off.
8. Moral Rights
8.1 Prior to the decision to commercialise, it should also be considered whether the
Creator of the work has moral rights in the work. This may occur where the work
contains a significant degree of creativity, for example an important journal article
written by a researcher. Creators have the right:
to be attributed (or credited) for their work;
not to have their work falsely attributed; and
not to have their work treated in a derogatory way.
9.1 Where ACT Health determines that IP will not be developed and commercialised, and
the IP is clear of any encumbrance, the IP Creators will be given the opportunity to
have the IP personally assigned to them. In instances where IP is not taken up for
commercialisation either by ACT Health or the creators it is can be offered up to any
other party providing they maintain the protection costs and an agreed royalty
payment on successful commercialisation.
9.2 Where the IP is assigned, all Protection Costs incurred will be reimbursed from any
royalty or commercialisation income generated after assignment in the following
order or priority:
9.3 ACT Health shall deduct all establishment costs and protection costs expended by
ACT Health as a first call on all gross commercialisation income.
9.4 Where ACT Health owns 100 per cent of the IP, the standard expectation is that any
net commercialisation income will be distributed as follows:
One third to the Creator(s) of the IP;
One third to the department(s) or section(s) of ACT Health which originated the
IP; and
One third to ACT Health.
9.5 ACT Health shall divide the one third share of net commercialisation income payable
to the creators amongst the individual Creators in accordance with the contributions
identified by them. If Creators have not identified contributions, ACT Health shall
distribute the one third share in accordance with its own reasonable estimate of the
relative contributions of each Creator. In making such an estimate, consideration
should be given to the role of any Creators who have left the employ of ACT Health.
9.6 Monies paid to staff under this policy shall be paid as income. Eligibility for income is
conditional upon staff having acted in good faith in accordance with the ACT Health
Intellectual Property policy.
9.7 In the event that commercialisation income is received by ACT Health in one lump
sum payment, all sub-division payments will be made out to Creators within three (3)
months of ACT Health receiving the commercialisation income and after all
commercialisation costs including future envisaged costs have been deducted,
providing there is certainty around these costs. In the event that commercialisation
Income are made as gradual payments (eg. milestone or royalty based or gradual
income), all sub-division payments will be made quarterly if the net amount to be
paid out exceeds AUD$3,000 or annually if the net amount to be paid out is less than
AUD$3,000.
9.8 Where the student of a University with which ACT Health has an arrangement,
ACT Health and the University may come to an agreement on how to equitably deal
with the IP of students, bearing in mind any claims the students may have under this
Policy and the IP Policy of the University.
10.1 Any dispute must be brought to the attention of the Director General or their
nominee. The Director General has responsibility to:
be fully aware of the dispute circumstances; and
ensure relevant parties have the opportunity to resolve the identified conflict.
10.2 The Director General must consider the dispute and may call for a recommendation
from the IP Committee. The Director-General has absolute discretion to take any
appropriate course of action subject to the terms of any agreement.
11. Evaluation
11.2 Method
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 annually to the Director-General.
12.1 Legislation
Copyright Act 1968
Crimes Act 1900
Designs Act 2003
Financial Management Act 1996
Patents Act 1990
Public Sector Management Act 1994
Trademarks Act 1995
12.2 Policies
ACT Health Intellectual Property Policy
12.3 Standards
N/A
13. References
Earlier republications
Since 1 November 2014 every authorised republication has been published in electronic pdf format on the ACT
Health policy register.
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.
ATTACHMENT A
Generally under copyright law ACT Health (on behalf of the ACT) will own the IP rights in anY
works created by an employee in the ordinary course of performing his or her duties as an
employee. This will include documents, applications or any other works developed under
instruction by an employee’s manager, and is usually also the case with material created by
an employee after hours, if it relates to tasks performed or projects undertaken in order to
perform the employee’s duties.
IP can be created in the course of employment through utilisation of ACT Health resources,
for example:
use of ACT Health’s laboratory facilities or equipment
through modifying or updating any existing ACT Health IP
in preparing material for presentation at conferences – this may be particularly
significant where the conference organiser purports to gain future commercial
advantage from content submitted by presenters.
In many instances, IP created within ACT Health is not created through 100% ACT Health-
owned contributions. However, ACT Health will most likely have some ownership of the IP
that is produced. If full ownership is attributable to another institution or if joint ownership
with ACT Health results, the other institutions will be contacted by the CIPO to discuss the
way forward to register, protect and develop the IP.
ACT Health acknowledges that many employees privately engage in study, research, writing
books and articles, and undertaking other activities that involve the creation of works by
those employees outside of their employment. ACT Health encourages those endeavours
and will not assert rights over works created in the private capacity of employees, unless the
academic or other work has been commissioned by ACT Health or uses or draws on the
resources of ACT Health. However, ACT Health may enter into agreements with employees
for the right to use academic works or subject matter generated by employees.
Students to be given access to ACT Health facilities, including any systems, data, patient and
other records or documents, will be required to sign confidentiality undertakings.
Unless otherwise agreed in advance with a student, ACT Health retains all IP rights in any
document, application or any other work created by the student, or in which the student has
been involved in creating, when that is within the ordinary course of ACT Health’s operations
and in other instances. For example, it will be appropriate for ACT Health to retain or assert
IP rights over works created by students, if a work is created:
Where the student of a University has an arrangement with ACT Health, ACT Health and the
University may come to an agreement on how to deal with the IP in any work created by
students, having regard to this Policy and the IP Policy of the University.
In the absence of an agreement between ACT Health and the visitor, the project IP created
by the visitor will be shared with ACT Health calculated through a resources input model.
Similar issues arise in relation to joint teaching hospital/university facilities, where health
research may be undertaken jointly by a mixture of university and hospital staff.
It is in the interests of both universities and ACT Health that issues regarding IP created by
clinical academics and at joint facilities be clarified as early as possible in the identification,
protection and commercialisation processes.
ACT Health will negotiate fair and equitable agreements as to the rights of respective parties
to the IP created in joint facilities or by clinical academics. For example, ACT Health has
negotiated an agreement with the ANU in relation to the operation of the Medical School,
which also includes arrangements for handling IP. In general, the organisation that pays for
the resources used to create the IP, owns the IP or their portion of financial input.
Independent Contractors
Where ACT Health engages a third party contractor to provide goods or services, there must
be an agreement in place with appropriate terms in the contract dealing with IP and taking
into effect contributing in-kind and financial resources. In the absence of an agreement, IP
ownership will be negotiated between all parties taking into effect contributing in-kind and
financial resources.
Independent Health Research and Research Institutes associated with ACT Health
ACT Health may house, or be associated with, independent Health Research and Research
Institutes, which carry out Health Research. ACT Health may support or resource such
health research in a number of ways, including through direct ownership and legal
responsibility, or through the provision of researchers and administrative staff,
infrastructure and equipment, or direct funding.
Regardless of whether such institutes are an independent legal entity or not, when ACT
Health resources are provided an agreement should be in place with the institute which
makes appropriate arrangements regarding the rights of ACT Health in relation to IP created.
Where ACT Health enters into collaborative activities, joint ventures, or similar
arrangements with other organisations, ACT Health should ensure that there is a legally
enforceable agreement between the parties.
Any such agreement should protect the interests of ACT Health proportionately to its
resources contribution to the project. ACT Health should obtain legal advice in advance
regarding proposed agreements on joint ventures and collaborative projects. Proposed
agreements should be sent to the CIPO for review or created by the CIPO prior to sign off by
the Director-General.
Exceptions
ACT Health does not assert ownership over any IP in work created by staff or originators that
is a work of a scholarly nature including, without limitation, a journal article, conference
paper, creative works or proceeding or text (‘exempt IP’) but subject to the conditions that:
ACT Health grants to the author of any teaching material that is subject to this SOP, a non-
transferable, perpetual, royalty-free license to use the material created for the sole purpose
of teaching any course.
If you consider your IP situation is not covered by any of the above scenarios, contact the
CIPO for further advice on how to proceed prior to entering into any contractual
negotiations or arrangements.
Attachment B
Terms of Reference
PURPOSE
The purpose of the Intellectual Property Committee (IPC) is to:
Administer the ACT Health Intellectual Property Policy and associated policies to
ensure efficient governance and management (including by way of protection and
commercialisation as appropriate) of the knowledge resources of ACT Health.
FUNCTIONS
Develop, protect and optimise (including marketing and promotion) the intellectual
property portfolio of ACT Health.
Oversee governance, management and review of all intellectual property assets and
related matters.
Devise and promote appropriate activities across ACT Health that will enhance
awareness and education of intellectual property issues.
Periodically review and make recommendations to the ACT Health Executive Council
as appropriate.
METHOD
The Committee is chaired by the Director General or nominated delegate.
Members with specific expertise may be co-opted as required.
Specialist legal advice will be sought as appropriate.
Records of proceedings shall be treated as commercial in confidence.
Maintain records of ACT Health Intellectual Property issues.