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Abstract Submissions 

Abstracts (proposals for a paper, panel, or poster) are invited in English, French or

Spanish.

To be considered for review, an abstract must include:

· A working title that clearly identifies the conference theme being addressed,

· A statement of the empirical or theoretical concern,

· A short summary locating the concern within a wider literature,

· A concise account of the empirical or theoretical methodological approach.

· The main arguments of the paper and an indication of the supporting evidence.

· A statement of the main conclusions and their relevance to an international

audience.

The abstract should be approximately 600 words in length, but no less than 400 or

more than 800 words.

Abstracts not meeting these requirements will be declined by the ISTR Conference

Committee.

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Managing Intellectual Property for Third Sector Initiatives through Franchising

Elizabeth Crawford Spencer1 

Themes addressed: governance and leadership, management of intellectual property as

governance, management and organizational practice, social entrepreneurship, social enterprise

570 words

This paper examines the role of franchising in the management of intellectual property (IP) in the

third sector. The paper briefly canvasses the growth of alternative strategies for social enterprise

initiatives, outlining the nature of the third sector and social enterprise . From a governance

perspective the third sector can be distinguished according to purpose and motivation, ownership

and accountability, and nondistribution of profits. It is neither s.t. ‘disciplinary forces’ of private

sector (e.g. clearly defined ownership rights) while at the same time it may evade public sectorcontrols.

2(Notwithstanding, in the current climate of economic distintegration and growing

cynicism with government, the inevitable question, ‘how effective is either of these?’) It has also

been suggested that social enterprise may be able ‘to resolve contractual problems more effectively’

(eg can economize on transaction costs – monitoring & enforce’t)3

Donors and recipients as

residual claimaints4 

Despite efforts to define this category of enterprise, it continues to expand and diversify with

creative approaches that transcend traditional categories. With this growth come the inevitable

criticisms, failures and a range of challenges. It is therefore necessary to consider how these new

and diverse enterprises are to be governed and regulated, either within accepted definitions or inways necessitating their revision.

The efficient management of IP is part of good governance. IP management is a key element of the

success or failure of many commercial enterprises, and is likely also to play a role in the success of 

social welfare entrepreneurship.5

This paper examines the importance of intellectual property and

its management in the context of social enterprise. As a practical matter, an organization’s

intellectual property is often overlooked or taken for granted, perhaps particularly in the case of 

third sector enterprise. Given the evidence that social enterprise often fails to adequately manage

its IP, the paper examines the many practical and philosophical reasons why intellectual property IP

is not managed or is under-managed, reasons that need to be clearly understood in order that they

can be effectively addressed.

Having established the fundamental framework within which to consider IP management for social

1Dr. Spencer is Assistant Professor, Faculty of Law, Bond University, Gold Coast, Australia

2See Farrar, 442-443

3See Farrar, 442-443

4 R. Hirshhorn, ‘The Governance of Nonprofits’ in R Daniels and R Morck (eds), Corporate Decision-Making in Canada, (1995)

5Gollin

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enterprise,6

the study considers the significance of the organizational framework, with a focus on

franchise models. While some research has considered organizational alternatives for third sector

initiatives, this paper will specifically assess the significance of the franchise model of organization

for the management of IP in social enterprise. While franchising is a business model that offers

certain benefits as well as disadvantages as a marketing channel and as a management structure,

what is fundamentally important for this research is that franchising is a form of governance that is

designed to maximize the value of IP. For this reason franchising offers potential to improve IP

management in social enterprise. The paper develops a framework of factors and conditions

according to which franchising can facilitate effective management of intellectual capital. Further

research will test and evaluate how these factors and conditions may apply in the social enterprise

context (with it obvious differences, for example in ownership, distribution of profits and

motivations).

6for example I-SEE, in has undertaken research into alternative scaling-up models such as licensing, joint

ventures, consortia and mergers and notes the concept of scaling up 'strategies or ideas', rather than

necessarily scaling up organizations and organizational frameworks. 

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Corporate Social Responsibility, Good Corporate Governance and theIntellectual Property: An External Strategy of the Management to Increase

the Company's Value 

Wuryan Andayani

affiliation not provided to SSRN  

November 2008 

National Conference on Management Research, Makassar, November 27, 2008  

Abstract:

This research investigates in three folds, the relationships among corporate governance, corporate

social responsibility and firm performance, then intellectual property and firm performance. Findings,

this research shows that independent board of directors is related to CSR. CSR and institutional

ownership is also related to firm performance. In addition, intellectual property is strongly related to

firm performance. This means that intellectual property owned by public limited companies in

Indonesia increases firm performance.

Intellectual Property & Contract

GovernanceRelationships between business partners are frequently regulated by complex

contracts where key terms may not clearly defined, responsibilities and

obligations may be overlooked, or where contractual compliance is not a high

priority. Relying on these third parties to self-report creates a significant risk of 

non-compliance.

Contact

Petrus Marais

Global Forensics Leader

Our Intellectual Property & Contract Governance(IPCG) team helps clients to govern self-reportingaspects of these contractual relationships. Ourinvolvement can be frequently triggered by a ‘right toaudit’ clause. As an impartial, objective party we seekrelevant facts in a non-adversarial manner to bringmeasurable value to our firms’ clients whilstmaintaining a healthy relationship with the business

partner concerned.

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+27 21 408 7026

globaladvisory@kpmg.com 

Using our established methodology and independentapproach, our team helps clients to enhance self-reporting contractual relationships with third parties,

for example royalties arising from patent, copyright,trademark, trade secrets or any other self-reportedarrangement.

We can provide a range of services, including:

  software end-user license reviews  channel reviews

  royalty reviews  supplier reviews  software asset management reviews  intellectual property management reviews  advertising agency reviews  third party administrator reviews  digital content and distribution reviews  investigation and prevention of counterfeiting or

other illicit use of IP

Our approach is aimed at preserving the underlyingbusiness relationship, easing third party concernsabout fair treatment and the confidentiality of itsinformation.

Our firms’ clients can benefit from:

  greater transparency in third party relationships,

reducing mistrust, clarifying facts and helpingachieve contract objectives

  addressing contract compliance risks  increasing revenues (or reducing costs), now and in

the future  advice on the management of key assets such as

intellectual property, brands and software.

We understand the dynamics of business partnerrelationships and associated complexities. We have

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helped business partners across a range of industriesto understand and manage the terms of theiragreements, and to establish compliance reviews as aroutine control measure.

17.01 - Intellectual Property Management and Commercialization

policies.tamus.edu/17-01.pdf

•

Found exclusively on: Yahoo! Search

17.01 Intellectual Property Management and Commercialization Page 1 of 20 17.01 Intellectual 

Property Management and Commercialization ... government employees, ...

http://www.slideshare.net/CAS.IP/institutionalization-of-intellectual-property-management-case-

studies-from-four-agricultural-research-institutions-in-developing-countries 

All the four case studies under discussion here reflect that IP policy and governance is evolving in the respective

countries. The studies indicate that the process is constantly changing due to global and national debates and

institutions need to be aware of this. Hence there needs to be a platform to discuss these. Since the pace of IP

regime differs in each country against the background of common issues, platforms of discussions and opinionsharing would be vital and necessary to implement the governance models.

Journal of Economic Behavior & Organization 

Volume 38, Issue 3, 1 March 1999, Pages 283-309

doi:10.1016/S0167-2681(99)00011-6 | How to Cite or Link Using DOI  Cited By in Scopus (138)

  Permissions & Reprints 

Institutional env ir 

Institutional environment and the mechanisms of

governance: the impact of intellectual property protection

on the structure of inter-firm alliances

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6  Managerial secrecy and intellectual asset protection in SMEs: The role of

institutional environment  Original Research Article 

Journal of International Management , Volume 17, Issue 2 , June 2011, Pages 130- 

142  

Hélène Delerue, Albert Lejeune

Show preview  | Related articles  | Related reference work articles 

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Managing Intellectual Property In Government - Presentation Transcript

1.  Managing IP in GovernmentExploring the Issues raised by the Auditor General of Victoria An Innovation Catalyst™ Seminar  Prepared and Presented byMarcus TarrantManaging DirectorMission HQ Pty. Ltd. ATF the Innovate Trust

2.  Contact DetailsMarcus TarrantManaging DirectorMission HQ Pty. Ltd. ATF the Innovate TrustMarcus.tarrant@missionhq.com.au+61 3 9005 9710www.missionhq.com.au © Mission HQ Pty. Ltd. All Rights Reserved2

3.  Copyright ©2010 Mission HQ.The format, structure and communication technique utilised in this document are the intellectual property ofMission HQ Pty. Ltd.This document is strictly classified as ―Commercial in Confidence‖ and intended only for recipients expresslyauthorised by Mission HQ. Any modification or distribution under altered expression, by any means, in its entirety

or in parts, to any person without written approval from Mission HQ is expressly prohibited.Natural Persons or bodies corporate may not copy, retransmit, distribute, publish or otherwise transfer anycopyrighted material to third parties or contractors without the express permission of Mission HQ.This document is intended to reflect MISSION HQ‘s high-level overview of IP Management in Government. Itdoes not constitute formal professional advice or a recommendation to potential licensors, tax advisors, inventorsor other third parties as to a course of action in respect of the processes addressed, and should not be relied onas such. All care is taken in the preparation of this document but MISSION HQ bears no responsibility as to thecontents of this document and disclaims any liability with respect to its use or misuse.Intellectual Property & Disclaimer

4.  Seminar Agenda © Mission HQ Pty. Ltd. All Rights Reserved4

5.  Quoteintellectual property is important because it confers exclusive legal rights which can be very valuable. It convertsknowledge into identifiable assets which can be transferred, licensed and sold.Invent Commercialisation Handbook © Mission HQ Pty. Ltd. All Rights Reserved5

6.  About Mission HQ Pty. Ltd. © Mission HQ Pty. Ltd. All Rights Reserved6Some recent past clients of Mission HQ and the team:

7.  Mission HQ OverviewThe team have undertaken the following projectsFederal and State GovernmentDepartment of Defence (DSTO) – Technology Transfer Advisory GroupDepartment of Industry and Resources (WA) – Investor Ready Programme Design and Opportunity EvaluationFrameworkDepartment of Land ‗Landgate‘ (WA) – Innovation programme design, and commercial engagement programme

(Business Associations)CSIRO – IP management processNICTA – Audinate Capital Raising 4.2m

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CRC‘s CRC-ACS, CRC for Polymers, Dairy CRCVC‘s Innovation Capital, Starfish Ventures – Austhink, Audinate, Ceram Polymerik etc.CRC IP Management EntitiesAdvanced PolymerikSmall ASX Listed IP intensive companies

Renewable Energy Holdings – IP Valuation8.  How can we help?

IP management trainingIP management process designIdentification of IPIP valuation for tax or commercial transaction purposesOpportunity identificationIP and Intellectual Asset CommercialisationIP management compliance © Mission HQ Pty. Ltd. All Rights Reserved8

9.  BackgroundIn 2005, The Auditor General of Victoria released a report titled ―Managing intellectual property in governmentagencies‖ 

This report highlighted current issues with the management of intellectual property in Government Agencies andmade a number of recommendations.Our experience in the Western Australian government sector has provided us with some unique insight on theseissues.We thought that 5 years on, it was time to bring together some relevant stakeholders to discuss some of theissues and challenges. © Mission HQ Pty. Ltd. All Rights Reserved9

10.  Session ObjectivesTo re-invigorate discussion on this important report from VAGO which to date has received little attentionTo create a dialogue on the issues raisedTo set the context on where Victoria sits relative to other state governments and the federal governmentImpart our experiences from dealings with the WA governmentDiscuss any operational issues related to the management of IP © Mission HQ Pty. Ltd. All Rights Reserved10

11.  Why is IP important? © Mission HQ Pty. Ltd. All Rights Reserved11

12.  IP management can result in an improved return on public investmentAn IP success storyAn agency in NSW developed a business function thesaurus for the NSW public sector. The thesaurus can bebuilt into other records management software packages used to store and retrieve information easily.The thesaurus has attracted international attention. Over sixty licences have been sold beyond the sectornationally and internationally, including whole-of-government licences to the Commonwealth and governments inthe Northern Territory and Alberta, Canada. These sales have generated significant revenue.Under the terms of the licence agreement, licensees must provide the agency with any modifications they maketo the thesaurus. © Mission HQ Pty. Ltd. All Rights Reserved

1213.  Poor IP management can result in substantial risk and cost.

The dangers of not managing IP rightsA Victorian government department entered into a software licence and development contract which involved theoutsourcing of a critical operational system. A subsequent review found that the department was exposed tosignificant risks:it did not own the software which drove critical systems, resulting in costs to the department of more than$50millionit had no right to profit from enhancements to the system made by the departmentit was prevented from reverse engineering and cloning the software for other applications, andit was restricted to one contractor for external support. © Mission HQ Pty. Ltd. All Rights Reserved13

14.  Looking at the report

 © Mission HQ Pty. Ltd. All Rights Reserved14

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15.  ForewordThe development of ideas and the application of new knowledge can position an organisation ahead of itscompetitors. Intellectual property (IP) is often at the heart of these new innovative goods and services, and is animportant and valuable asset that needs to be properly managed.For government agencies, proper management of IP is challenging. If agencies do not protect IP, the state maylose valuable knowledge and its application. Conversely, if the management of IP is too restrictive, the asset maybe underutilised and the community benefit unrealised. Agencies are also major consumers of IP owned by

others, so the use of this IP needs to be prudently negotiated and managed.This audit assessed the effectiveness of the management of IP assets in selected government agencies. Thisreport makes some important observations about the public management of IP and recommends the need formore explicit recognition, management and application in the public sector. © Mission HQ Pty. Ltd. All Rights Reserved15

16.  About Intellectual Property―Intellectual property‖ (IP), refers to ―the legal rights which result from intellectual activity in the industrial,scientific, literary and artistic fields‖1. As a starting point, the creator of IP is the owner of the legal rights, but, like other property, IP can be owned,sold, rented or given away.In some cases, for example copyright, the protection of IP is automatic. In other cases, the ownership of IP canbe protected through a variety of mechanisms, including patents, plant breeder‘s rights, trademarks and circuitlayout rights.

 © Mission HQ Pty. Ltd. All Rights Reserved1617.  IP in context

 © Mission HQ Pty. Ltd. All Rights Reserved17

18.  Forms of IP © Mission HQ Pty. Ltd. All Rights Reserved18

19.  Why is IP Important?IP is a resource that can be used, managed and commercialised to provide economic, social and environmentalbenefits for government, the community and business.If managed correctly, some of the benefits that can spring from IP resources include:revenue or royalties from commercialisationexpansion of business opportunitiesimproved competitivenesseconomic growth and job creation in the jurisdiction, if IP is commercialisedsocial and environmental benefits from the broader take-up of IP. © Mission HQ Pty. Ltd. All Rights Reserved19

20.  Characteristics of Intellectual Property AssetsIP assets are divisible through shared ownership, licensing and royalty arrangements.IP tends to be cumulative in nature..It is also difficult to have an exclusive ownership of IP  – information and ideas, once exchanged, are difficult totake backUnlike physical assets, the value of IP is not necessarily diminished over time or through use.IP can emerge from a variety of sources. Within government agencies, employees, contractors and fundedbodies commonly create IP.Different professions think about IP differently, for example, lawyers refer to IP as having a property right in law;accountants refer to it as identifiable intangible assets; and managers think of it as an investment which has no

physical existence. © Mission HQ Pty. Ltd. All Rights Reserved20

21.  What risks does ineffective management of IP invoke on public sector agencies? © Mission HQ Pty. Ltd. All Rights Reserved21

22.  About the surveyThe objective of the audit was to assess whether selected Victorian public sector agencies manage their IPassets effectively.We examined 3 agencies: the Department of Education and Training, the Department of Human Services andVicRoads in detail (―the audited agencies‖) and surveyed 26 other departments and agencies (―the surveyedagencies‖). We considered:policy and direction

day-to-day management of IP, including how agencies identify, protect and record IPmanagement of IP in purchasing contractsmanagement of IP in funding arrangements.

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 © Mission HQ Pty. Ltd. All Rights Reserved22

23.  A. Policy and Direction © Mission HQ Pty. Ltd. All Rights Reserved23

24.  Policy and DirectionAustralian Legislative and policy framework

Do Victorian whole-of-government intellectual property guidelines and policies provide clear direction?Are agency level intellectual property policies and guidelines clear?Are there clear directions on considerations in allocation of intellectual property rights? © Mission HQ Pty. Ltd. All Rights Reserved24

25.  1. Australian legislative and policy framework © Mission HQ Pty. Ltd. All Rights Reserved25

26.  2. Whole of government policiesVictoria does not have a single policy governing the management of IP across government. The policyresponsibility for public sector IP in Victoria is spread throughout various departments and agencies. © Mission HQ Pty. Ltd. All Rights Reserved26

27.  3. Agency IP guidelines

Policy coverage:Are there clear and documented policies and procedures?Do documented policies cover all IP relevant to the agency?Is it clear to which functions and agencies the policies apply?Policy accountability:Are accountabilities for implementation and policy oversight clear?Are accountabilities for procurement, licensing and transfer of IP clear?Policy administration:Are policies revised as appropriate?How well are the policy requirements communicated to staff? © Mission HQ Pty. Ltd. All Rights Reserved27

28.  4. Allocation of IP rights © Mission HQ Pty. Ltd. All Rights Reserved28

29.  4. Allocation of IP Rights (Continued)DirectionDoes the agency have a clear position on allocation of IP rights?Does this position consider IP that is created within the agency, created under contract or created under fundingarrangements?Decision-makingIs there clear guidance for staff managing negotiations on when, how and why to consider negotiations awayfrom the base position?Are key decision-making considerations documented/transparent?Are decisions timely?Access to expertiseDo staff have access to appropriate expertise and advice as required? © Mission HQ Pty. Ltd. All Rights Reserved29

30.  4.a. DirectionMost agencies surveyed too the view that any IP created as a result of government contracts should vest with thestate.This position was reflected in template contract terms and conditions used by the agencies.The exception to this position was generally found in IT contracts, as these terms are rarely acceptable to thevendor―We pay, we own‖  © Mission HQ Pty. Ltd. All Rights Reserved30

31.  4.b. Decision makingConsiderations provided by DIIRD:agencies should seek economies in IP acquisition and management by obtaining and retaining only the IP rightsthat are necessary for operational activities.IP rights should be in the hands of the party whose corporate mission is to exploit and improve such IP, and is

best able and willing to do sowhen engaging external parties to develop IP that may have a commercial potential, and where the external partyis able and willing to commercialise the IP, government is encouraged to grant ownership or commercialisation

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rights to the external party joint ownership of IP should be discouraged.where joint ownership of IP is agreed to by a public authority, the contract should contain appropriate provisionsrelating to the use, management and administration of IP assets. © Mission HQ Pty. Ltd. All Rights Reserved31

32.  4.c. Access to Expertise

Requires access to expert legal, financial and commercial advice.The 3 audited agencies had good access to legal expertiseAccess to other kinds of advice - for example on financial, commercial and social implications of decisions - andassistance with evaluation of options for broader issues than legal risks was limited. © Mission HQ Pty. Ltd. All Rights Reserved32

33.  4. IP Allocation ConclusionsAt a whole-of-government level, guidelines and directions on the management of IP in Victoria are piecemeal.The current policies and guidelines provide limited assistance in individual agencies‘ management of IP.However, government has not clearly articulated how public IP assets should be managed.The lack of documented decision-making criteria has an impact on the transparency and defensibility ofdecisions. Decisions on allocation of IP rights can have significant economic consequences, and the current lackof a clear framework exposes staff to risks that their decisions are not seen as fair and impartial. © Mission HQ Pty. Ltd. All Rights Reserved

3334.  4. IP Allocation recommendationsThat the government nominate an agency to take responsibility for the development of a whole-of-governmentpolicy on all IP.This policy will need to be developed in conjunction with the Department of Treasury and Finance, theDepartment of Innovation, Industry and Regional Development, the Department of Justice, the Department ofPremier and Cabinet, and line agencies.That the Department of Justice complete its planned revision of the copyright policy and guidelines fordepartments on copyright management as a priority.That government departments and agencies develop policies providing detailed guidance on managing IP in linewith the whole-of-government direction and organisational objectives. © Mission HQ Pty. Ltd. All Rights Reserved34

35.  4. IP Allocation responsesDIIRDThe Department supports the development of a whole-of-government policy on all IP. This should be undertakenwith a degree of urgencyDepartment of JusticeThe Department of Justice welcomes the Auditor-General‘s review and agrees with the conclusions andrecommendations of the report.The Department will welcome the opportunity to be involved in the development of a whole-of-government policyon all intellectual property in conjunction with other Government agencies.Department of Education and TrainingThe Department of Education and Training recognises the need to provide guidance to employees with respect toany whole-of-government direction and organisational objectives.Department of Human ServicesThe department strongly supports the need for a whole of government approach to IP. A whole of government IPpolicy should clearly articulate the policies applicable to IP but should be sufficiently flexible to allow the policy tobe tailored to the particular needs of departments and the stakeholders that they serve.

 © Mission HQ Pty. Ltd. All Rights Reserved35

36.  B. Day to Day management of IP © Mission HQ Pty. Ltd. All Rights Reserved36

37.  B. Day to Day Management of IPidentify significant IP (existing or under development)adequately protect IPmanage HR processes related to staff rights and responsibilities for IPmanage record keepingmanage the risks of infringement and liability. © Mission HQ Pty. Ltd. All Rights Reserved37

38.  B.1. Significant IP

Are there guidance materials to assist staff to recognise IP and understand how to protect it?Are there mechanisms to identify IP that is created by staff, contractors and collaborative projects, like fundedresearch?

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Is there a notification process for IP created by employees, contractors and funded bodies?Is the possible creation of IP considered in project planning phases? © Mission HQ Pty. Ltd. All Rights Reserved38

39.  B.2. Protecting Intellectual PropertyWhere registration of IP rights is required in order to secure protection do agencies take appropriate steps topreserve the possibility of registration?

Where rights are protected through registration, do agencies considerthe costs and benefits against the risks of not registering?Do agencies take adequate steps to protect non-registrable IP (e.g. maintaining confidentiality, using copyrightnotices)?Do agencies periodically evaluate whether to maintain registered rights? © Mission HQ Pty. Ltd. All Rights Reserved39

40.  B.3. Managing HR ProcessesEmployees create IP as part of their work and their rights and responsibilities for IP should be considered as apart of human resource management policies.Do employment agreements clarify ownership of IP betweenemployer/employees?Do recruitment processes consider any IP employees may bring to theiremployment and are there processes in place to manage any issues

arising?Does the exit process for employees leaving the agency includeinformation on obligations in relation to IP and confidential information?Does the agency consider and manage the moral rights of its employees? © Mission HQ Pty. Ltd. All Rights Reserved40

41.  B.3. Managing HR Processes (Continued) © Mission HQ Pty. Ltd. All Rights Reserved41

42.  B.4. IP Record KeepingA central register of IP also makes it easier to assess commercial values, update registrations and developstrategies for the use of IP. Useful information on an IP register includes:Locationownership detailswhere contractors are used, details on copyright clauses in contractswhere material is licensed-out, details of licence, licensee, paymentdetails and assignment details. © Mission HQ Pty. Ltd. All Rights Reserved42

43.  B.4. IP Record Keeping - AccountingAll audited agencies consider that to accurately or meaningfully record a monetary value for their IP would bedifficult. Still, both VicRoads and DET have developed models to value some of their IP. VicRoads uses modelsbased on cost recovery and the price of a substitutable alternative.DET‘s charges reflect a number of factors, including the potential market value of the materials and thedesirability that publicly funded materials should be made widely available. © Mission HQ Pty. Ltd. All Rights Reserved43

44.  B.5. Risks of InfringementOur criteria to assess infringement and liability management covered 4 areas:

Does the agency monitor potential infringement of its IP and take appropriate actions to protect it?Does the agency effectively manage the risk of infringing the IP of other parties?Where IP is transferred outside the agency through sale or licensing arrangements, are the risks associated withliability and indemnity considered and managed effectively?Is the management of IP-related risks integrated into broader agency risk management processes? © Mission HQ Pty. Ltd. All Rights Reserved44

45.  B.5. Risks of infringement © Mission HQ Pty. Ltd. All Rights Reserved45

46.  B. Recommendations on Day to Day ManagementCode of conduct provisions for public sector employees should address employer ownership of all types of IP, not just copyright. For example:the Victorian Public Sector Standards Commissioner should consider this when issuing new codes of conduct

under the Public Administration Act 2004 (Vic.)government agencies that produce their own codes of conduct should address this as codes are reviewed andupdated.

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Agencies should assess whether the provisions in the Copyright Act 1968 (Cwlth) regarding moral rights can beimplemented in their agency and, if not, obtain consents as far as possible from their staff and contractors.Agencies subject to the Financial Management Act 1994 (Vic.) should conduct an IP audit or in other waysassess the value of their IP assets to comply with Accounting Standard AASB 138. © Mission HQ Pty. Ltd. All Rights Reserved46

47.  C. Purchasing contracts and Intellectual Property

 © Mission HQ Pty. Ltd. All Rights Reserved47

48.  Purchasing contracts and Intellectual PropertyEffective contracts will clarify IP rights, minimise and manage risks, and support optimal outcomes for the agencyand the state. Ineffective IP management of contracts can result in:a lack of clarity in IP ownership and rightsadditional costs to license the contractor‘s pre-existing IP or other essential supporting materialsexposure to third-party infringementlimited access to relevant project IPlack of awareness by the agency of valuable IP developed under the contract. © Mission HQ Pty. Ltd. All Rights Reserved48

49.  C.1. Clarity in IP OwnershipGuidance

Does the agency have clear guidelines to assist staff in managing IP in purchasing?Contract controlDo policies or procedures ensure that only staff with the relevant expertise can authorise a departure fromstandard contract provisions? © Mission HQ Pty. Ltd. All Rights Reserved49

50.  C.2. Do tender processes address IP issues?PlanningAre IP issues considered before tenders/bids are called?Does the agency consider the IP rights necessary to meet the operational needs of the agency?Does the IP need to be purchased outright or could adequate access be obtained through other means (e.g.through licensing) for a lower price?Calling tenders Are the agency‘s preferred IP provisions clearly defined, implemented and communicated to tenderers? IP in tender submissionsDoes the agency have procedures for managing the disclosure of agency IP to tenderers?Does the agency clarify rights to IP contained in tender submissions? © Mission HQ Pty. Ltd. All Rights Reserved50

51.  C.3. Are agreements effectively documented?Intellectual property definition and allocation of rightsDoes the contract define IP, and is the definition adequate to cover all types of IP likely to be developed underthe contract?Is there clarity in the IP ownership and other rights (e.g. licences and royalties)?Pre-existing intellectual propertyIs there recognition that ownership of pre-existing IP will not be affected by the contract?Does the agency receive a licence to use the contractor‘s pre-existing IP and/or other IP necessary for the fulluse of the contract deliverables (at no additional cost)?Risk clauses

Does the contractor indemnify the agency against claims and liabilities?Does the contractor warrant that it has the legal ability to assign or transfer IP ownership over works producedunder contract?Rights and obligationsDoes the contract address the question of moral rights?Does the contract include conditions requiring the contractor to notify the agency of any IP developed under thecontract? © Mission HQ Pty. Ltd. All Rights Reserved51

52.  C. ConclusionsCurrently, with the exception of information technology purchases, many agencies view full ownership of IP asthe default position. Thinking more flexibly about IP ownership when developing RFTs and purchasingarrangements may:create opportunities for purchasing agencies to acquire goods and services at a lower price

attract a wider range of suppliersreduce time spent in contract negotiations.

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 © Mission HQ Pty. Ltd. All Rights Reserved52

53.  C. RecommendationsThat the Department of Treasury and Finance develop improved guidance on IP considerations in purchasing.This should:take into account the whole-of-government policy direction, once establishedrecognise that IP decisions need to be made before contractual solutions are found.

That agencies clarify IP ownership of tender submissions, and make this clear in requests for tender.That the Department of Education and Training review:the adequacy of its controls over changes to contract templatesthe terms relating to IP in its contract templates. © Mission HQ Pty. Ltd. All Rights Reserved53

54.  D. Funding and Intellectual Property arrangements © Mission HQ Pty. Ltd. All Rights Reserved54

55.  D. IP Policies for funded bodiesClarity of direction and consistencyAre guiding policies, principles and considerations on IP arrangements with funded bodies clear to agency staffand to funded bodies?Is the allocation of IP rights under funding agreements consistent with the agency‘s stated direction? 

The agreements entered into for funding are variously called ―grants agreements‖, ―funding and servicesagreements‖, and ―performance agreements‖ in different agencies. For the purposes of this report, we are usingthe term ―funding agreement‖ to encompass all of these. Decision-makingIs decision-making responsive to service delivery needs and concerns of funded bodies?Do decisions take into account the level of risk, government servicedelivery objectives and potential community benefits? © Mission HQ Pty. Ltd. All Rights Reserved55

56.  D. Documentation of agreementsDocumentationDoes agreement documentation between the department and the funded bodies:make ownership of and rights of access to IP clear?adequately recognise rights regarding the pre-existing IP of each party?give adequate warranty against possible misuse of IP belonging to other parties?Does agency record keeping give clear indications of the IP rights of each party?ManagementDo funding agencies ensure that the funded body has adequate arrangements to safeguard the IP?Where rights to IP are vested in the funding agency, are there effective records so the funding agency knowswhat it ―owns‖? Does the agency have a strategy to manage external access and future exploitation of significant IP? © Mission HQ Pty. Ltd. All Rights Reserved56

57.  D. Conclusionsa position that automatically vests ownership of all IP in the state, without addressing stewardship considerations,poses a substantial risk. These considerations include:Which party is best placed to capitalise on the IP to provide community benefit?Does the department maintain records of IP that it notionally ―owns‖ under these arrangements? Does the department have a plan for managing access to, and capitalising on, these resources?

 © Mission HQ Pty. Ltd. All Rights Reserved57

58.  D. RecommendationsGovernment should develop guidelines addressing the allocation of IP rights under funding agreements.That DHS develop a comprehensive departmental IP policy which clarifies arrangements for:copyright and non-copyright IPIP in funded agencies, including occasions when it isappropriate for the default position to prevail, and where exceptions can be considered.Departments with significant funding commitments to bodies where IP is likely to be created should specifyminimum requirements for IP policies and practices in those bodies. For Example:DHS should develop guidelines on minimum IP management requirements for public health services andhospitals. © Mission HQ Pty. Ltd. All Rights Reserved58

59.  What‘s happening at a federal level  © Mission HQ Pty. Ltd. All Rights Reserved59

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60.  Federal Attorney General Recommendations and FindingsWhole of Government Intellectual Property Principles –  Attorney General‘s Department - September 2005―Agencies should identify means and circumstances where IP materials can be gainfully reused or sharedbetween and across agencies or jurisdictions, and where they can facilitate public access to IP material,including, as appropriate, opportunities for commercialisation.‖ 

61.  Commonwealth reportsCommonwealth IT IP Guidelines:

Management and commercialisation of Commonwealth intellectual property in the field of information technology,Department of Communications, Information Technology and the Arts (2000)Compendium of National Competition Policy Agreements, National Competition Council (1998)Department of Finance and AdministrationCommonwealth Procurement Guidelines, (2005)Department of Finance and Administration, Department of Finance and AdministrationGovernment Information Technology and Communications Framework,Australian National Audit OfficeIntellectual Property Policies and Practices in Commonwealth Agencies, Audit Report No.25 2003-2004, (2004)Attorney-General's DepartmentGuidelines for management of published copyright materials issued by the Commonwealth CopyrightAdministration © Mission HQ Pty. Ltd. All Rights Reserved61

62.  Various State Approaches to IP Management © Mission HQ Pty. Ltd. All Rights Reserved62

63.  State ResourcesNew South Wales:Intellectual Property Management Framework for the NSW Public Sector (2005)Queensland:Queensland Public Sector Intellectual Property Guidelines (2003)Queensland Public Sector, Intellectual Property Principles (2003)South Australia:Report of the Auditor-General for the year ended 30 June 1999, Supplementary Report, Intellectual PropertyManagement.Tasmania:Information Technology-Related Intellectual Property Policy PrinciplesVictoria:Managing and Commercialising Intellectual Property — A Guide for Victorian Universities and Research Institutes- Draft for Industry Comment (2002)Western Australia:Government Intellectual Property Policy and Best Practice Guidelines (2003)Intellectual Property Guidelines, Third Edition. (2002) © Mission HQ Pty. Ltd. All Rights Reserved63

64.  New South WalesReleased 2005 © Mission HQ Pty. Ltd. All Rights Reserved64

65.  New South WalesPremiers DepartmentThe intellectual property (IP) of the NSW Public Sector is a significant asset. It needs to be managed responsibly,

in the same way NSW Public Sector agencies manage the State ‘s tangible assets, such as its finances,buildings, infrastructure and the environment.The Intellectual Property Management Framework for the NSW Public Sector has been developed to assistagencies to manage their IP effectively. It is the product of an extensive consultation process with NSW PublicSector agencies, and draws on the expertise of specialist practitioners from across Australia. © Mission HQ Pty. Ltd. All Rights Reserved65

66.  New South Wales © Mission HQ Pty. Ltd. All Rights Reserved66

67.  New South Wales (Continued) © Mission HQ Pty. Ltd. All Rights Reserved67

68.  New South Wales Continued

The Audit Office of NSW suggests that agencies consider recording the following IP:computer programs developed for the agency where the development cost (or replacement cost) exceeds$10,000

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publications or promotional materials sold or provided free of chargedatabases maintained by the agencytelevision and radio advertising material developed by or for the agencyartworks and photographs commissioned by the agency and used in promotional materialcomputer programs licensed by the agencytraining materials developed by the agency where the development cost (or replacement cost) exceeds $10,000trademarks or logos used by the agency whether or not they are registered as trademarks or business names

patented inventions, registered designs, and registered plant varieties created by the agencyintegrated circuit boards designed by or for the agency, andpatented inventions, registered designs, plant varieties, © Mission HQ Pty. Ltd. All Rights Reserved68

69.  NSW Better Practice Checklist © Mission HQ Pty. Ltd. All Rights Reserved69

70.  Western Australia © Mission HQ Pty. Ltd. All Rights Reserved70o  Released 2003

71.  WA Government Policy Overview (DOIR) © Mission HQ Pty. Ltd. All Rights Reserved

7172.  IP management has become its own field © Mission HQ Pty. Ltd. All Rights Reserved72

1.73.  Looking at tools can give us some insightIAM has become its own discipline.A look at some of the tools can give some insight into the issues others are having © Mission HQ Pty. Ltd. All Rights Reserved73 

http://www.slideshare.net/mtarrant/managing-intellectual-property-in-government 

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