Understanding Intellectual Understanding Intellectual PropertyProperty

IP Australia SeminarIP Australia Seminar

August 6, 2003August 6, 2003

Kimberley Heitman, B.Juris, Llb, Kimberley Heitman, B.Juris, Llb, AACSAACS

Director, Legal Services Office, Director, Legal Services Office, UWAUWA

Understanding IP - OverviewUnderstanding IP - Overview

Types of IPTypes of IP Fruits of ResearchFruits of Research The University’s IP PolicyThe University’s IP Policy Patents – Perils, Pitfalls and ProsperityPatents – Perils, Pitfalls and Prosperity Confidential information Confidential information Commercialisation of IP – Revenue SharingCommercialisation of IP – Revenue Sharing CopyrightCopyright Computer CodeComputer Code

Types of IPTypes of IP

Copyrights Copyrights PatentsPatents Plant RightsPlant Rights Confidential Information & “Know-How”Confidential Information & “Know-How” TrademarksTrademarks DesignsDesigns Circuit LayoutsCircuit Layouts

Fruits of ResearchFruits of Research

Owner of IP has international rights to Owner of IP has international rights to commercial exploitationcommercial exploitation

Research, trials, prototypes, patent costs Research, trials, prototypes, patent costs Production, manufacturing and marketingProduction, manufacturing and marketing Royalties Royalties IP audit, licencing and assignmentIP audit, licencing and assignment

UWA IP PolicyUWA IP Policy

Ownership of IPOwnership of IP Duty to reportDuty to report Managed by Office of Industry & InnovationManaged by Office of Industry & Innovation Revenue sharing and capital returnRevenue sharing and capital return IP agreements with external bodiesIP agreements with external bodies Legal Services OfficeLegal Services Office http://www.research.uwa.edu.au/policy/ip/http://www.research.uwa.edu.au/policy/ip/

ipguide.htmlipguide.html

New IP policy reviewNew IP policy review

Internal draft receiving committee reviewInternal draft receiving committee review Distinction between academic & general Distinction between academic & general

staff removedstaff removed Computer code copyright Computer code copyright Distinction between teaching and general Distinction between teaching and general

purposes for UWA licence removedpurposes for UWA licence removed New policy on taping & transmitting New policy on taping & transmitting

lectures lectures

PatentsPatents

Potentially most valuable innovationPotentially most valuable innovation Stringent and costly registration processStringent and costly registration process International PatentsInternational Patents Provisional PatentProvisional Patent Examiner’s requisitionsExaminer’s requisitions Life of PatentLife of Patent MarketingMarketing

Confidential InformationConfidential Information

UWA IP – obligation to protectUWA IP – obligation to protect Others’ IP – pollution of UWA IPOthers’ IP – pollution of UWA IP www.research.uwa.edu.au/policy/ip/ugep.htmlwww.research.uwa.edu.au/policy/ip/ugep.html

Signed by UWA – cleared through LSOSigned by UWA – cleared through LSO Academic publication needsAcademic publication needs

CommercialisationCommercialisation

Office of Industry and Innovation - Office of Industry and Innovation - www.oii.uwa.edu.au/www.oii.uwa.edu.au/

Research fundingResearch funding Commercial PartnershipsCommercial Partnerships Revenue sharing & royaltiesRevenue sharing & royalties

CopyrightCopyright

Literary Works – including source codeLiterary Works – including source code Artistic WorksArtistic Works Dramatic WorksDramatic Works Musical Works in written formMusical Works in written form Sound RecordingsSound Recordings FilmsFilms BroadcastsBroadcasts Online TransmissionOnline Transmission

Computer CodeComputer Code

May be a copyright work and a patentMay be a copyright work and a patent If copyright, adaptation rights and moral If copyright, adaptation rights and moral

rights are reservedrights are reserved If a patent, other applications using the If a patent, other applications using the

innovation must pay royaltiesinnovation must pay royalties Mixed up rights – e.g. multimediaMixed up rights – e.g. multimedia

Thank you – Any Questions?Thank you – Any Questions?

Kimberley Heitman, Legal Services OfficeKimberley Heitman, Legal Services Office Extension 1965Extension 1965 Email kheitman@admin.uwa.edu.auEmail kheitman@admin.uwa.edu.au www.admin.uwa.edu.au/legalwww.admin.uwa.edu.au/legal