Commercialisation of State Intellectual Property – The Western Australian Government Releases A New Intellectual Property Policy

The Western Australian Government has released a new Intellectual Property Policy, which aims to encourage innovation in the public sector by unlocking new opportunities for commercialisation. The Policy provides a framework relating to Intellectual Property (IP) creations, management, use and disposal.

Ownership of Intellectual Property

Consistent with the position for many employees, the State owns IP created by its employees in their employment, unless agreed otherwise. The IP Policy provides new guidance on the ownership arrangements and provides that Agencies may assign ownership to other parties for the benefit of the State including if the use:

  • Facilitates IP development for the benefit of the WA community.
  • Facilitates job creation and attracts investments.
  • Builds the innovation ecosystem.

Under the new policy State Government Agencies will be encouraged where possible, reasonable and practicable to grant rights to State owned IP that is not being commercialised with the fewest possible restrictions, except for reasons of privacy, confidentiality, public safety, security and law enforcement, public health and compliance with the law.

Commercialisation of State Government IP

Under the IP Policy agencies are encouraged to commercialise their IP to maximise public value.

The IP Policy explains that where there is a clear net benefit to the State, an agency may commercialise its IP rights providing it has statutory power under its enabling legislation or the State Trading Concerns Act 1916 (WA).

There are a variety of IP commercialisation pathways ranging from undertaking the commercialisation in-house to disposal. Options that agencies may pursue include through joint venture arrangements, spin off companies and assignment or licensing to a third party. Responsibility for the commercialisation of IP should be vested with the party best placed to achieve maximum public benefit. Subject to legal requirements agencies may assign IP or grant a licence to commercially exploit the IP.

Further, if an agency does not wish to commercialise its IP directly, it can appoint a third party to provide commercialisation services; license the IP to a third party to commercialise or assign the IP to a third party.

Where the IP is assigned or licensed, agencies must ensure assignment or licence is for valuable consideration; and associated risks and costs are borne by the third party to the fullest practicable extent.

Revenue from the disposal of IP including commercialisation may be retained by agencies that have specific legislative rights. Currently, the Financial Management (Net Appropriations) Determination 2022 (WA) allows for the retention of an amount less than $15,000 annually. However, the Treasurer can authorise an agency to retain additional revenue.

Lavan Comment

This policy will open up opportunities for the commercialisation of valuable and useful IP opportunities that might otherwise have been lost. Organisations should be alive to opportunities this policy may present.

If you would like to information on how the new WA Government Intellectual Property Policy may affect your business; or need assistance in negotiating the commercialisation of Intellectual Property, please contact Iain Freeman, Partner of Lavan’s Intellectual Property & Technology practice team.

Disclaimer – the information contained in this publication does not constitute legal advice and should not be relied upon as such. You should seek legal advice in relation to any particular matter you may have before relying or acting on this information. The Lavan team are here to assist.