Transcript legal_counsel.pps

Walking the line:
academic freedom and government
research funding contracts – an
anachronism?
Go8 General Counsel
Go8 Directors Conference
Melbourne, May 2009
Go8 General Counsel
•
•
•
•
•
•
•
•
Kim Heitman UWA
Carol Kirby UNSW
Chris Penman Melb
Richard Fisher Syd
Celine McInerney Adel
Dorothy Collins UQ
Julianne Wantrup Monash
Ken Grime ANU
Current projects
•Commonwealth Government contracts clauses
•Australian Learning and Teaching Council: new
grant template
•NHMRC/ARC/UA ‘Part B’ research misconduct
•IP Australia submission: ‘experimental use’
exemption
TIME FOR A NEW APPROACH TO
NEGOTIATING RESEARCH AGREEMENTS
BETWEEN THE COMMONWEALTH AND
AUSTRALIAN UNIVERSITIES: Go8
Supplementary Submission to the ’08 Innovation
Review
Issues?
•
•
•
•
Right to Publish
Ownership of IP
Background IP Licences
IP Warranties and
Indemnities
• Research Conflict of
Interest
• Termination
• Indemnities
• Moral rights
Anachronism?
• 2. Anything done, or existing out of date; hence any
former thing, which is, or would be, out of harmony
with the present (Shorter Oxford 3rd Ed)
What is out of harmony?
• IP grab: why?
• Cwth IP Policy “ Intellectual Property Principles for
Australian Government Agencies’:
• 1. Australian Government agencies are responsible for
managing IP in their control or custody in an effective,
efficient and ethical manner.
– The Government, through its agencies seeks to
manage IP for the benefit of the Australian
community as a whole. IP should be managed in
accordance with all relevant legislation, policies and
guidelines.
And
• 8. Agencies should maintain a flexible approach in considering
options for ownership, management and use of IP.
In considering their options, agencies should be mindful of:
opportunities for financial savings in procurement contracts including
through obtaining only those IP rights required to meet the objectives
of the procurement;
other relevant government policy objectives, including the promotion of
industry development.
And
• 10. Contracts and other agreements must address IP issues where
relevant:
– IP issues should be addressed at an early stage, in developing contracts for
the creation of IP;
– Agencies should ensure that IP rights secured are appropriate to identified
needs and objectives and should only obtain those rights required taking into
account questions of the efficient, effective, and ethical use of agency
resources.
And finally….
• 13
Agencies should be responsive to opportunities for
commercial use and exploitation of IP, including by the private sector.
• 14
Unless commercial activities are required as an integral
part of an agency’s objectives, commercialisation of IP by an agency
should be no more than an ancillary part of its activities and should
not become a core business activity.
!!
Commonwealth Response?
• No ‘pan-Cwth’ approach: Finance and AGs
• Engagement with DOHA and DEEWR; AGs and DIISR
• ‘Towards a Standard Funding Agreement with
Australian Universities’: April ‘09
– Addresses Go8 submission
– A ‘start’
– Reflects confusion between consultancy vs grant
funding
• Next stage: clause drafting ‘rubber hitting road’
ALTC
• Approached Go8 in June 08
• Request to negotiate a new template funding
agreement
• Issues? Similiar to Cwth
• Two issues of real substance:
– IP ownership
– Indemnities
IP ownership?
• Current ALTC contracts require ‘assignment’ of all IP
produced
• Multi-participant contracts
• ‘Dissemination’
• Go8 response to provide a broad licence, ownership
remains with Universities
• Balance of sector approval via SOUL
• Board of ALTC to consider
Indemnities
•
•
•
•
ALTC position reflects Cwth generally, although not
as bad as some
Indemnity places Uni’s at risk: become liable for
losses that are not within the Uni’s realm to control
“the use by Us of the Project Material, including any claims by third parties
about the ownership or right to use Intellectual Property Rights (including
moral rights) in Project Material”
“any breach by You or any of Your employees, agents, or subcontractors of
obligations or warranties under this Agreement”
Thank you
Ken Grime
Convenor, Go8 General Counsel
University Counsel
ANU