Monday, 27 July 2009

Appealing invention

I know everyone has been wondering: what has happened to UWA v Gray? This is the case where it was found that invention did not fall within an academic's duties of employment and thus the university did not own that intellectual property. Even if the university had an intellectual property policy claiming it this was insufficient. Universities can't just go around claiming their staffs' property. Naturally, UWA lodged an appeal, almost as soon as the judgement was handed down. What will they say? This is where it is at, according to the nice people at the Perth registry:
"Matter number WAD 93 of 2008 was heard by the Full Court of the Federal Court between 10 to 14 November 2008. Judgment has been reserved. When a date for handing down judgment is known the parties will be advised and the judgment available on the internet. The record will then be amended to show that the matter has been finalised.

In the normal course, the Court aims to hand down judgment in most matters within approximately three months of the hearing. However, in some complex and longer matters, more time may be required. As this matter was complex and was heard over five days, this probably falls into that category.

Judgment writing is a time consuming process. In writing Full Court judgments, the judges, if they are in agreement as to the outcome, may elect to appoint a judge to write the main judgment and the other judges may publish short reasons in relation to areas where they differ as to reasoning in coming to particular conclusions. If a Judge differs from the majority, he or she would publish their own reasons for dissenting. In judgment writing it is not unusual for there to be several drafts, the final draft would need citations and footnotes to be thoroughly checked and thoroughly proof-read in preparation for uploading to the internet."

Monday, 20 July 2009

What Universities claimed in the first IP policies

IP Policies 1986-96


Policy Year



to Report



Collaborator or
Grant body

Australian National University


University claimed all IP, but not traditional scholarly output[1]




Not specified

Adelaide University


University claimed all IP[2]

Unclear from the policy[3]


Claims substantial ownership[4]

1993 policy on research contracts shows University would negotiate[5]

Macquarie University


University claimed all IP but waived traditional scholarship[6]



Not specified

University claimed all[9]

University of New England


University claimed some IP[10]



Not specified

Not specified



University claimed all IP[13]

No, but financial incentives in place


Not specified

Not specified



University claimed all IP[15]

Yes, but no mechanism[16]


Not specified[18]

Not specified[19]

[1] The Australian National University was especially broad in this: “the whole of the professional time of an academic staff member…”

[2] University of Adelaide claimed all IP produced within the university and a proportion of staff IP produced when on study leave or secondment at another institution. It did not claim IP of part-time staff for work done outside of university duties. (Adelaide 1989) and not less than one half of IP of honorary or unpaid staff, all surviving the termination of employment

[3] The University of Adelaide 1989 policy pointed out that

[4] University of Adelaide claimed one quarter of IP of visitors from research conducted while visiting Adelaide on leave from another university (Adelaide 1989)

[5] Adelaide University amended, in 1993, its policy on Outside research grants, contracts and consultancies, which included items that other universities included in their IP policy.

[6] Macquarie University normally waived all right to traditional scholarly output (MQ 1990)

[7] Macquarie policy requires immediate reporting for potentially patentable research (MQ 1990)

[8] Macquarie university made student assignment of IP rights to the university a condition of their enrolment (MQ 1990) In 1991 it was pointed out that this “may be at variance with what is considered to be the individual’s rights at law” (MQ Minutes Council Meeting 23 August 1991). However, the policy remained until a much later policy was approved (post-2000)

[9] Macquarie university policy was to not normally sign research contracts unless all IP assigned to it. (MQ 1990)

[10] The University of New England claimed staff IP when it had made a specific financial or resource contribution; if it was patented; if it was course material; if software etc. All other IP belonged to the originator who was required to grant the university a royalty-free licence to use it. (UNE 1995)

[11] (UNE 1995) Required to report patentable or comercialisable research

[12] (UNE) Except in working with “a particular” supervisor who may require the student to assign IP.

[13] Royal Melbourne Institute of Technology defined IP more broadly than other universities, as “any confidential information or any rights resulting from intellectual activity”. RMIT also specified that it would own copyright only when net income from copyright exceeds $15,000 in any calendar year. (RMIT 1995)

[14] The RMIT 1995 policy did make provision for owning work using considerable quantities of the university’s pre-exiting IP or working in collaboration with staff.

[15] The University of Western Australia did not claim ownership over copyright, except for computer programs. This is the equivalent of not claiming traditional scholarly output. (UWA v Gray, 2008, pp46-47). The UWA v Gray judgment found in 2008 that the University of Western Australia had no right to claim all IP of a staff member and that this (1996) policy was invalid in that respect.

[16] UWA v Gray (page?)s

[17] The segments of the 1996 policy reproduced in the UWA v Gray judgement suggest the policy did not differentiate between student and staff originators (see pp. 45-48)

[18] Not specified in the segments replicated in UWA v Gray. Specification in original policy unknown.

[19] Not specified in the segments replicated in UWA v Gray. Specification in original policy unknown.

Tuesday, 14 July 2009

Canberra and the control of research decisions

This is a segment from the chapter I am currently writing, "Knowledge and Property". This section is a critical chronology of the Commonwealth policy framework in which universities developed intellectual property policies themselves. It isn't quite finished but I have been surprised by some of it myself....

HERP, AVCC, ARC, NBEET, PMSEIC, DITC and the control of knowledge

As we know, Dawkins was instated as Minister in 1987, implementing his Higher Education reforms in 1988, including the establishment of the Australian Research Council. In January 1989, the Australian Research Council released its first advice to applicants for research funding, which referred to research to grants for 1990. In this advice, the Council required that if an “invention or process improvement” arises, the grant recipient or their university must protect the “industrial property in that invention”. Then, at their own expense, they may apply for a patent, at which point they must notify the Commonwealth. Then:
If the grantee and the institution do not wish to apply for a … Patent…the grantee and the institution shall, at the request of the Commonwealth, assign to the Commonwealth the right…and no amount will be payable by the Commonwealth for any such assignment.

This is a major deviation from the Patents policy and practices of most institutions where, as a matter of tradition, it was understood that the researcher could choose to publish or in other ways make public all research results, and thereby release to the public (and thus choose not to protect) any invention or knowledge. They could also choose to patent if they wished, but the right to choose belonged to the researcher. These new research grants would place a requirement on researchers to protect the outcomes of research if they were patentable. This would require some degree of secrecy and removes the researcher’s choice. Reeling under the Dawkins reforms, this violation of academic freedom seems to have gone unnoticed by universities in desperate need of the funds the Research Council was to provide. Moreover, universities were most likely distracted from an abstract idea like academic freedom by the apparent wish of the Commonwealth to claim ownership of any intellectual property that the university may not choose to (or be able to afford to) patent. This would have required universities to review and revise their existing patents policies. The RMIT concern regarding government interference suggests this.

In April of the same year, Purple Circle member Robert Smith – now head of Dawkins’ NBEET – chaired a review of Higher Education Research Policy. This review focused on enhancing the performance of universities and increasing research output and on establishing and strengthening financial and innovation links between higher education research and industry. In June 1989, the Australian Research Council released a report On the Public Funding of Research, making a case for the role of public funding of basic research especially (strengthening its own position) and recommends reviewing the whole system of innovation to identify any gaps in the development from basic research to product development.

In December 1989 Prime Minister Bob Hawke asked the Australian Science and Technology Council how one might go about setting national directions for research “so that Australia’s research effort will best support the Government’s national policy objectives”. The resulting 1990 report argued that research was not the process people had always thought it was and that new ideas about the character of the discovery process justified government interference in the types of knowledge pursued by universities:
There has been a significant rethinking of the long-held belief that discoveries are essentially unpredictable… Globally there is now much greater awareness that there must be conscious decision-making about where to put the national emphasis in research.

In May 1990, an NBEET committee chaired by head of the Australian Research Council (and another Purple Circle member) Don Aitkin claimed that more of the research funding for universities should be funnelled through the Australian Research Council to be redistributed competitively, which he said would produce better research.

In 1991, the Department of Industry, Technology and Commerce released a Report of the Task Force on the Commercialisation of Research from (known at the time as the Block Report, chaired by Ray Block). This report advocated a market-driven focus on research commercialisation claiming that market-pull, rather than technology-push, was a more successful strategy for research commercialisation. This was not just a preferred business methodology for the task force members, but was a subtle argument that would see market needs drive research priorities in universities:
The task force believed that Australia cannot afford to let technology drive our business direction; rather, the market must drive the direction of our business growth and innovation behaviour…unless research has relevance to a market it will have no commercial potential. Indeed, the task is perhaps more aptly described as how to bring the market to bear on research rather than how to commercialise research.

This approach would certainly take the right to choose research activities away from academics – a systematic undermining of academic freedom. This would have explicitly shifted the control of knowledge to the market.

The Australian Research Council in 1992 took the Block Report and a similar document on the commercialisation of Medical Research (known as the Coghlan Report) and provided comment on their recommendations to NBEET, who then passed these to the Minister. Despite wanting to encourage university-industry links, The Council only gave qualified support to the reviews’ recommendations. In relation to the recommendation of targets for industry funding, they said:
Universities should be free to determine the extent of their links with industry, again acknowledging that, in most instances, this [Block Report recommendation] target level of commitment would already be exceeded.

The Australian Research Council, consistent with the neo-liberalism with which it was formed, preferred financial incentives to regulatory controls. The same applied to externally funded chairs, where:
Encouragement of further such liaison [appointment of industry-funded chairs] was supported by the board, which emphasised, however, that specific institutional appointments should not be dictated by government.

While appearing, in this way, to support institutional autonomy and thus academic freedom, the Australian Research Council gave universities choice – it just limited the space in which they could choose. According to the Research Council, Universities were able to choose their own percentage of commercialisation and who would be appointed to industry-funded staff positions. But they could not question the fact or validity of externally funded appointments and research commercialisation: the Australian Research Council would use its funding power to encourage these. Encouragement is certainly a euphemism, since recurrent funding had been reallocated to competitive funding through the research council, to be distributed partially on the basis of alignment to national priorities. The Australian Research Council could well afford to specify instances where institutional autonomy should prevail, for their control of university-based knowledge had rapidly become substantial.

Intellectual property took over the research policy agenda in 1993, when the Prime Minister’s Science, Engineering and Innovation Council published The Role of Intellectual Property in Innovation. This report pointed out that:
The world intellectual property market represents $600 billion of industrial products and processes annually.
It would have only taken this line to prompt action, which was undoubtedly its intent. The report went on to say that “worthwhile participation in this market will often be determined by whether or not there is enforceable intellectual property protection”. Such protection was likened to a fence:
Laws for the protection of intellectual property…provide a protective barrier against third parties who seek to appropriate the work of the innovator and take a free ride on that work. Without this barrier innovation is like a crop in an unfenced field, free to be grazed by competitors who have made no contribution to its cultivation.

This passage – written for the ‘legal perspectives’ part of the report – shows the new way the Prime Minister’s Council was thinking about university-based knowledge. The researcher, for one, is now an “innovator”, applying new knowledge to useful product development. The results of their labour, now “innovation” is inherently commercial – we know this, because other people (“third parties”) are not beneficiaries of the work or the public or even the national economy, they are “competitors”. What positions them as competitors is their role in relation to the production of knowledge: they “made no contribution to its cultivation”. Since this is the case, these third parties must be positioned as consumers. Leaving knowledge “unfenced” gives consumers a “free ride”, which in this configuration of university-based knowledge, is unfair to knowledge producers. This language shows that the primary concern of the legal perspective in guiding policy development is commercial. This is probably because the framework in which intellectual property exists is a commercial one. We will get back to this in more detail later.

What is important about the commercial, competitive and commodified nature of knowledge when configured as intellectual property by the Prime Minister’s Council is the relationship of knowledge to the nation and the economy – because commodified knowledge is not necessarily the same as knowledge that enhances the national economy, even if both value money over other types of good. The “third party” that the report described as having not contributed to the cultivation of research’s “crop” may well be the public. The free and unfettered entry of knowledge to the public in many instances will contribute to economic growth – or some other public good – via, for example, more efficient practices. The “free riders” on knowledge are often needed to ensure innovation has its desired outcome. Positioning research outcomes as a commodity to be traded competitively can delay or limit the benefits of research. A competitive environment where knowledge is a commodity – as this passage clearly describes innovation protected as intellectual property – will be concerned first for the financial benefit owed to the knowledge producer rather than the benefit (which may be economic) of the knowledge itself. This made the language of commodification somewhat contradictory to the economic goals of the Commonwealth for higher education in the late 1980s and 1990s. Busily trying to encourage the universities to make their own money on the one hand, they sought in the same action to deny free access to the public of the knowledge they hoped would grow the economy. The exception to this contradiction exists in patented invention, where protection is normally the best way of realising the benefits new knowledge. But universities had long recognised this, as the Wollongong patent policy explained so clearly, and there would have been no need for widespread policy development had a preoccupation with invention only been the case. Government and, increasingly, universities themselves, were concerned to expand the income derived from the production of knowledge and thus needed to expand their policies to encompass intellectual property in its widest sense.

Having received the Prime Minister’s Council report in 1993, the new education Minister, Simon Crean, asked The Australian Research and Higher Education Councils to devise ways of raising awareness about intellectual property – in other words, ways of encouraging universities to exploit more of it. This request led to the 1995 document that RMIT was so cautious about. Their caution was framed by the Australian Vice Chancellors’ Committee discussion paper from 1993 and it is clear from the minutes that the committee considered the Vice-Chancellors to be a more trustworthy source of guidance than the potentially self-interested Commonwealth. What seems surprising about this positioning of the two groups as opposite is that the Vice-Chancellors’ Committee Discussion Paper was signed by the Committee’s president, Robert HT Smith, former head of NBEET and Purple Circle author of the 1989 Review of Higher Education Policy.