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

Right to Publish Ownership of IP Background IP Licences IP Warranties and Indemnities Research Conflict of Interest Termination Indemnities Moral rights Issues?

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 Anything done, or existing out of date; hence any former thing, which is, or would be, out of harmony with the present (Shorter Oxford 3 rd Ed)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…. 13Agencies should be responsive to opportunities for commercial use and exploitation of IP, including by the private sector. 14Unless 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