Intellectual Property Guideline for Unsolicited Private Sector Proposals submitted under Working with Government
1 – Introduction
This Guideline provides a checklist of intellectual property (IP) issues to be covered in unsolicited proposals submitted under the Working with Government Guidelines for Privately Financed Projects in order to assist proponents to effectively describe intellectual property aspects of their proposals.
This Guideline should be read in conjunction with the Working with Government Guidelines for Privately Financed Projects which set out the means of establishing partnerships between the public (NSW Government) and private sectors.
Advice contained in the IP Guideline is of a general nature only. Proponents should consider seeking independent professional legal advice prior to approaching the New South Wales Government with an unsolicited private sector proposal.
2 - What is Intellectual Property?
Intellectual Property (IP) is defined in the Working with Government Guidelines for Privately Financed Projects (at page 84) as:
Inventions, original designs and practical applications of good ideas protected by statute law through copyright, patents, registered designs, circuit layout rights and trademarks; also trade secrets, proprietary know-how and other confidential information protected against unlawful disclosure by common law and through additional contractual obligations, such as confidentiality agreements.
3 - Statutory Protection for Intellectual Property
Intellectual property is protected by various Commonwealth statutes that cover copyright, patents, trade marks, registered designs, circuit layouts and plant breeders rights. The common law and/or contractual arrangements may also protect information disclosed in an unsolicited proposal.
3.1 - Copyright
Original literary and artistic elements of an unsolicited proposal may be protected under the Copyright Act 1968 (Cth). Copyright protection is automatic and there is no requirement for registration in Australia. Proponents should clearly indicate the owner of copyright for each element claimed as well as the year of first publication for all published material.
3.2 - Patents
A patent is a temporary monopoly granted under the Patents Act 1990 (Cth) to exploit, or authorise others to exploit, an invention. An unsolicited proposal may include an invention that is patented or that has a patent application pending. Details of all registered and pending patents should be clearly indicated in any unsolicited proposal.
3.3 - Trade Marks
A trade mark is a sign used to distinguish the goods or services of one trader from those of others. An unsolicited proposal may include the use of one or more trade marks.
All trade marks owned or licensed by a proponent and used in an unsolicited proposal should be clearly indicated by either [ ® ] for a registered trade mark or [ ™ ] for an unregistered trade mark. Registered Trade Mark details should be included in the proposal. For more information see the Trade Marks Act 1995 (Cth).
3.4 - Registered Designs, Circuit Layouts and Plant Breeders Rights
Designs, computer circuit layouts and plant varieties may also by protected by Commonwealth Statute. Any intellectual property element of an unsolicited proposal that is protected as a Registered Design, Circuit Layout or Plant Breeders Right should be clearly identified. For more information, see the Designs Act 1906 (Cth), Circuit Layouts Act 1989 (Cth) and Plant Breeders Rights Act 1994 (Cth).
3.5 - Confidential Information
Information contained in an unsolicited proposal such as technical information, trade secrets and know-how may be protected by the equitable action of breach of confidence. An element of an unsolicited proposal that is confidential in nature should be clearly indicated as such.
To attract a ‘confidential’ status, ideas must not be ‘in the public domain’, however a collection of ideas, each of which is common knowledge, may attract confidential status.
4 - Intellectual Property Items to be Included in Unsolicited Proposals
i) Inventory of Each Item
All unsolicited proposals should include an inventory of significant intellectual property protected by statute or common law, as well as any confidential information protected by common law. All significant items should be described in detail.
ii) Nature of the Intellectual Property Claimed
The type of intellectual property claimed must be included for each item, for example an artists impression may be protected by copyright and an invention may be protected by a patent.
iii) The Owner(s) of the Intellectual Property Claimed
The owner or licensee of the intellectual property claimed for each item should be included in the proposal. The relationship to the proponent of any third party owner should also be included. The holder of any moral rights in relation to the item (include author/artist names) should also be included. For more information on moral rights see Part IX of the Copyright Act 1968 (Cth).
iv) Registration Details
Where registrable rights are claimed, copies of records of registration or applications for registration of the rights must be attached. For automatically protected items, such as copyright, that have previously been published, the year of first publication should be included in the proposal.
v) Confidential Items
Any items for which confidentiality is wholly or partly claimed should be clearly indicated in the proposal.
vi) Valuations of Intellectual Property Items
Each significant intellectual property item outlined in the proposal should contain an independent valuation. Such valuations should include details of the basis on which the valuation is made and any supporting evidence. All independent valuations will be regarded as indicative only and the NSW Government is in no way bound by any valuation.
5 - Market Testing and Direct Negotiations
Unsolicited proposals will generally be market tested to ensure the Government achieves value for money. Where a proposal is to be market tested, the NSW Government will make every effort to avoid compromising the intellectual property and confidentiality rights of the proponents when preparing a Request for Tender (RFT). However, in order to achieve this outcome, the NSW Government relies on the proponent to clearly indicate all intellectual property and confidentiality rights.
If an unsolicited proposal has significant intellectual property that is of significant benefit to the public interest, the Budget Committee of Cabinet (BCC) may bypass the competitive tendering process and allow direct negotiations with the Government. If BCC approves direct negotiation, a public statement will be issued outlining the reasons for this approach.
6 - Next Steps
Any proponent considering approaching the NSW Government with an unsolicited proposal should first read the Working with Government Guidelines for Privately Financed Projects.
For information on procedural issues involved with submitting an unsolicited proposal, please see the list of contact details.
7 - Contacts
The Director-General of the Premier’s Department is the contact for New South Wales Government unsolicited proposals. All unsolicited proposals should be addressed to:
Director-General
Premier’s Department
Level 39
Governor Macquarie Tower
1 Farrer Place
SYDNEY NSW 2000
Queries related to the assessment process for unsolicited proposals, may be directed to:
Director
Private Projects Branch
Governor Macquarie Tower
1 Farrer Place
SYDNEY NSW 2000
Phone: (02) 9228 3213
Facsimile: (02) 9228 5748
Email: wwg@mail.treasury.nsw.gov.au
Queries relating to asset management and procurement policy may be directed to:
Director
Infrastructure, Asset Management and Procurement Branch
Governor Macquarie Tower
1 Farrer Place
SYDNEY NSW 2000
Phone: (02) 9228 4401
Fax: (02) 9228 5748
8 - Disclaimer
Any representation, statement, opinion or advice, expressed or implied within this Guideline is made in good faith but on the basis that the State of New South Wales, its agents and employees are not liable (whether by reason of negligence, lack of care or otherwise) to any person for any damage or loss whatsoever which has occurred or may occur in relation to that person taking or not taking (as the case may be) action in respect of any representation, statement, opinion or advice referred to within this Guideline.