Managing intellectual property rights in NSW government agencies

The NSW Government creates, owns and uses significant intellectual property (IP) through its various activities including science, health, education, public infrastructure, information technology, and the arts. It is necessary for NSW agencies to be aware of the IP it creates and uses to ensure that the management of the IP is efficient and lawful.

What is intellectual property?

IP is the legal rights associated with the intellectual activity in the industrial, scientific, literary and artistic fields. It refers to the intangible assets that are created as a result of the intellectual efforts of individuals. Intellectual property rights come in many different forms including:

  • trade marks – protects brands including names, letters, signatures, logos, devices, colours, shapes and signs
  • copyright – protects creative works including literary works, computer programs, databases, plays, films, scripts, website content, performances, architectural plans, schematics, musical works, sound records, publications, novels, choreography, and photos
  • patents – protects new and novel inventions
  • designs – protects the overall visual appearance of a product.

Other forms of IP include trade secrets, confidential information, domain names, circuit layouts, plant breeders rights, geographical indications and privacy.

To fully optimise the benefits of IP assets, it is critical for government agencies to ensure that its IP is properly protected in order to commercialise the IP asset, defend against infringers, assign, licence and sell the IP.

Further, it is also necessary to have appropriate mechanisms in place to ensure that any use of third party IP does not infringe the rights afforded to the owner or licensee of that IP.

Management of intellectual property

In March 2021, the NSW Government released the NSW Government Intellectual Property Framework 2020 (NSW IP Framework) to assist NSW government agencies with dealing with and managing its IP.

The NSW IP Framework is made up of three parts. Part 1 sets out 12 principles to support best practices in the areas of:

  • management and compliance
  • ownership and rights
  • sharing, licensing, assignment and commercialisation
  • identification and recording
  • protection and branding.

Part 2 of the NSW IP Framework describes the different types of IP, including the forms mentioned above, their associated rights, the rights given to agencies for IP created by employees or contractors, and Crown copyright.

Part 3 of the NSW IP Framework provides a detailed explanation of the principles.

IP principles for NSW government agencies

The 12 IP principles are as follows:

Management and compliance

  1. an agency's IP assets should be managed efficiently, effectively and transparently to ensure the maximum benefit and usage of these assets for the benefit of the people of New South Wales
  2. agencies should have in place internal procedures to ensure that all relevant agency personnel are made aware of and comply with IP laws, and respect the legal rights of IP creators, owners and licensors and all other people who have legal interests in IP, including moral rights under the Copyright Act
  3. before using IP material, agencies should check if they own IP. If not, check whether their proposed use of the IP is permitted under an existing licence with a supplier, IP owner/licensor or collecting society
  4. before procuring or acquiring a licence to use IP, agencies should check if Whole of Government IP licences or other arrangements are in place for that class of IP

Ownership and rights

  1. agencies should ensure that IP ownership and rights are clearly addressed where relevant in their agreements and other commercial arrangements
  2. where an agency procures, commissions or funds the creation of new IP, the agency should consider whether the agency should own the IP, or alternatively, obtain sufficient licences for that IP to enable the agency to achieve its objectives, having regard to all relevant factors

Sharing, licensing, assignment and commercialisation

  1. where it is appropriate to do so, agencies are encouraged to share and publicly disseminate IP material which they own
  2. agencies wishing to share or publicly disseminate IP material should first consider whether any third party IP rights, personal information, confidentiality, security or sensitive classification or other restrictions apply
  3. agencies may commercialise their IP material on terms which are consistent with the agency's legal powers, purpose and strategic priorities and in accordance with all relevant policies on dealing with State assets

Identification and recording

  1. agencies should maintain appropriate internal processes and systems to identify, record and manage any business-critical or strategically valuable IP (including any IP with high public value) that they own, control, or use

Protection and branding

  1. agencies should take appropriate steps to protect the agency's business critical or strategically valuable IP (including any IP that has high public value) where there is a net benefit in doing so
  2. agency branding and marketing materials must comply with NSW Government policies on the use of State insignia, government owned logos, publication style guides and business and domain names.

Internal procedures to ensure compliance

Under the above IP principles, it is a requirement for government agencies to have internal procedures to ensure that all its personnel are aware of and comply with IP laws. To ensure that agencies comply with this requirement, they should:

  • provide training to staff for education regarding IP rights and provide adequate resource materials regarding IP
  • ensure that any contract documentation used by the agency includes relevant clauses regarding IP ownership and use
  • ensure that key personnel seek relevant advice regarding IP compliance when undertaking projects which may involve the creation or licensing of IP
  • seek legal advice prior to any use of IP owned by a third party
  • implement a culture which respects the rights afforded IP creators.

In addition to personnel training, agencies should also ensure that its IP is properly identified and recorded. This may include maintaining a register for business-critical and strategically valuable IP along with any documentation establishing ownership. Such documentation may include licence agreements, deeds of assignment, terms of employment, contractor agreements and any other document establishing ownership of IP.

Whole of Government agreements

The Commonwealth and the states are the beneficiaries of certain licence agreements which allows for the free use of copyright material for all agencies covered by the agreements. The benefit of these licence agreements are that any agency who is party to the agreements are allowed to use the copyright material covered by the licence without seeking additional clearance from the copyright owner. Some of these licences include:

  • government statutory licence – use of a third party copyright work by the NSW Government does not infringe if the use is done for the services of the state
  • Australasian Performing Rights Association (APRA) music licence – APRA represents composers and publishers of musical works. The APRA music licence allows for the playing of musical works and sound recordings in the workplace
  • educational statutory licence – allows for the use of third party copyright materials in education institutions. This encompasses education institutions which form part of the NSW Government, including TAFEs and public schools
  • media monitors licences – allows agencies access to digital news and media analytics.

This publication does not deal with every important topic or change in law and is not intended to be relied upon as a substitute for legal or other advice that may be relevant to the reader's specific circumstances. If you have found this publication of interest and would like to know more or wish to obtain legal advice relevant to your circumstances please contact one of the named individuals listed.