14 September 2022
23 min read
#Government, #Intellectual Property
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The NSW Government creates, owns and uses significant intellectual property (IP) through its various activities including science, health, education, public infrastructure, information technology, and the arts. It is necessary for NSW agencies to be aware of the IP it creates and uses to ensure that the management of the IP is efficient and lawful.
IP is the legal rights associated with the intellectual activity in the industrial, scientific, literary and artistic fields. It refers to the intangible assets that are created as a result of the intellectual efforts of individuals. Intellectual property rights come in many different forms including:
Other forms of IP include trade secrets, confidential information, domain names, circuit layouts, plant breeder's rights, geographical indications and privacy.
To fully optimise the benefits of IP assets, it is critical for government agencies to ensure that its IP is properly protected in order to commercialise the IP asset, defend against infringers, assign, licence and sell the IP.
Further, it is also necessary to have appropriate mechanisms in place to ensure that any use of third party IP does not infringe the rights afforded to the owner or licensee of that IP.
In March 2021, the NSW Government released the NSW Government Intellectual Property Framework 2020 (NSW IP Framework) to assist NSW government agencies with dealing with and managing its IP.
The NSW IP Framework is made up of three parts. Part 1 sets out 12 principles to support best practices in the areas of:
Part 2 of the NSW IP Framework describes the different types of IP, including the forms mentioned above, their associated rights, the rights given to agencies for IP created by employees or contractors, and Crown copyright.
Part 3 of the NSW IP Framework provides a detailed explanation of the principles.
The 12 IP principles are as follows:
Management and compliance
1. an agency’s IP assets should be managed efficiently, effectively and transparently to ensure the maximum benefit and usage of these assets for the benefit of the people of New South Wales
2. agencies should have in place internal procedures to ensure that all relevant agency personnel are made aware of and comply with IP laws, and respect the legal rights of IP creators, owners and licensors and all other people who have legal interests in IP, including moral rights under the Copyright Act
3. before using IP material, agencies should check if they own IP. If not, check whether their proposed use of the IP is permitted under an existing licence with a supplier, IP owner/licensor or collecting society
4. before procuring or acquiring a licence to use IP, agencies should check if Whole of Government IP licences or other arrangements are in place for that class of IP
Ownership and rights
5. agencies should ensure that IP ownership and rights are clearly addressed where relevant in their agreements and other commercial arrangements
6. where an agency procures, commissions or funds the creation of new IP, the agency should consider whether the agency should own the IP, or alternatively, obtain sufficient licences for that IP to enable the agency to achieve its objectives, having regard to all relevant factors
Sharing, licencing, assignment and commercialisation
7. where it is appropriate to do so, agencies are encouraged to share and publicly disseminate IP material which they own
8. agencies wishing to share or publicly disseminate IP material should first consider whether any third party IP rights, personal information, confidentiality, security or sensitive classification or other restrictions apply
9. agencies may commercialise their IP material on terms which are consistent with the agency’s legal powers, purpose and strategic priorities and in accordance with all relevant policies on dealing with State assets
Identification and recording
10. agencies should maintain appropriate internal processes and systems to identify, record and manage any business-critical or strategically valuable IP (including any IP with high public value) that they own, control, or use
Protection and branding
11. agencies should take appropriate steps to protect the agency’s business critical or strategically valuable IP (including any IP that has high public value) where there is a net benefit in doing so
12. agency branding and marketing materials must comply with NSW Government policies on the use of State insignia, government owned logos, publication style guides and business and domain names.
Under the above IP principles, it is a requirement for government agencies to have internal procedures to ensure that all its personnel are aware of and comply with IP laws. To ensure that agencies comply with this requirement, they should:
In addition to personnel training, agencies should also ensure that its IP is properly identified and recorded. This may include maintaining a register for business-critical and strategically valuable IP along with any documentation establishing ownership. Such documentation may include licence agreements, deeds of assignment, terms of employment, contractor agreements and any other document establishing ownership of IP.
The Commonwealth and the states are the beneficiaries of certain licence agreements which allows for the free use of copyright material for all agencies covered by the agreements. The benefit of these licence agreements are that any agency who is party to the agreements are allowed to use the copyright material covered by the licence without seeking additional clearance from the copyright owner. Some of these licences include:
Holding Redlich can assist government agencies with regards to its compliance with the NSW IP Framework by assisting with the protection of its IP rights (including any filings for trade marks, patents and designs), preparing and reviewing IP agreements, management of IP portfolios and enforcement where necessary. If you would like more information, please contact us below or send us your enquiry here.
Author: Simon Balales
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The Trustee for MKD Architects Trust v Sutherland Shire Council [2022] NSWLEC 1487
DEVELOPMENT APPLICATION – residential flat building – amended plans – conciliation conference – agreement between the parties – orders
Environmental Planning and Assessment Act 1979, ss 4.15, 8.7, 8.15; Environmental Planning and Assessment Regulation 2000, cl 55; Land and Environment Court Act 1979, s 34; State Environmental Planning Policy (Building Sustainability Index: BASIX) 2004; State Environmental Planning Policy (Housing) 2021, cll 16, 17, 18, 19; State Environmental Planning Policy (Resilience and Hazards), cl 4.6; State Environmental Planning Policy (Transport and Infrastructure) 2021, cl 2.99; State Environmental Planning Policy 65 – Design Quality of Residential Apartment Development; Sutherland Shire Local Environmental Plan 2015, cll 4.3, 4.4, 4.5, 4.6, 6.2, 6.4
Frost v Northern Beaches Council [2022] NSWSC 1214
TORTS – Private nuisance – Interference with use and enjoyment of land – Where very large boulder sits naturally atop cliff, two-thirds on private residential land and one-third on council land, but large portion of boulder overhangs the cliff face, suspended above neighbouring residence below – Where geotechnical report advises boulder will fall at an entirely unpredictable point in time, with catastrophic consequences of damage to property and life in residence below – Where owner of land below boulder advised by local council to vacate residence due to risk – Where owner of land below seeks mandatory injunction that owners of land on which boulder sits abate the nuisance by removing and/or securing boulder, as well as damages for losses associated with vacating residence.
TORTS – Private nuisance – Interference with use and enjoyment of land – Basis for liability – Nonfeasance – Whether boulder constitutes nuisance or only potentiality of nuisance – Despite not having fallen, boulder poses clear and present danger so threatening neighbouring property and residents as to render it uninhabitable from perspective of reasonable land-owner – Sufficient impact upon enjoyment of plaintiff’s property to found claim in damages if defendants are responsible at law for the nuisance.
TORTS – Private nuisance – Scope of duty – Landowner in occupation who is aware (or ought to be) of hazardous condition arising naturally on their land which endangers neighbouring land or people on it has “measured duty of care” to take such steps as are reasonable in all the circumstances to prevent or minimise risk of injury or damage to neighbour, and no more than that – Magnitude of risk relevant but emphasis on ease and expense of abating risk, and ability of particular defendant to do so – Holding that in all of the circumstances, the scope of the defendants’ duty does not extend to require them to undertake works to abate the nuisance – No breach of duty and no liability for damages – Declaration that plaintiff is entitled to access defendants’ land to undertake reasonable works for abatement – Summons otherwise dismissed.
EQUITY – Equitable remedies – Injunctions – Mandatory injunctions – Quia timet injunctions – Injunctive relief sought exceeds that to which plaintiff is legally entitled because in all of circumstances, scope of defendants’ duty does not oblige them to abate the nuisance alone – Summons dismissed.
Family Law Act 1975 (Cth), s 79; Law Reform (Miscellaneous Provision) Act 1946 (NSW), s 5(2)
Toga Penrith Developments Pty Ltd v Penrith City Council [2022] NSWLEC 117
APPEAL – appeal against Commissioner’s decision – refusal of development consent – mixed use development in Penrith City Centre – non-satisfaction of jurisdictional preconditions – overshadowing of public open space – construction of clause – whether public open space must be in Penrith City Council – whether development exhibits design excellence – relevant matters to be considered – architectural design competition to be held – whether views of Design Integrity Panel after competition held relevant matter – competition to be held in relation to the development – whether competition held in relation to the development on appeal.
Environmental Planning and Assessment Act 1979 (NSW) s 1.5; Interpretation Act 1987 (NSW) ss 3, 5, 34, 35; Land and Environment Court Act 1979 (NSW) s 56A; Penrith Local Environmental Plan 2010 cll 8.1, 8.2, 8.4, 8.7.
HB & B Property Pty Ltd v Parramatta City Council [2022] NSWLEC 1478
DEVELOPMENT APPLICATION: New Residential Care facility – conciliation conference - amended plans – agreement reached between the parties - orders made. Environment Planning and Assessment Act 1979 (NSW), ss 4.6, 8.7, 4.14, 4.15, 4.16; Environmental Planning and Assessment Regulation 2000 cl 55; Land and Environment Court Act 1979 (NSW), s 34; Parramatta (former the Hills) Local Environment Plan 2012 (NSW), cll 4.1, 4.2, 5.21, 7.2; State Environment Planning Policy (Housing for Seniors or People with a Disability) 2004 (NSW), cll 24, 25, 26, 28, 30, 40; State Environmental Planning Policy (Housing) 2021 sch 7; State Environmental Planning Policy (Resilience and Hazards) 2021, s 4.6; State Environmental Planning Policy (Vegetation in Non-Rural Areas) 2017 (NSW); State Environmental Planning Policy No 55 (NSW) – Remediation of Land.
Confos v Lane Cove Municipal Council [2022] NSWLEC 1477
DEVELOPMENT APPLICATION – Alterations and additions to an existing dwelling – amended plans – conciliation conference – agreement between the parties – orders made
Civil Procedure Act 2005 (NSW) s 26; Environment Planning and Assessment Act 1979 (NSW) ss 4.15, 4.16, 8.7; Environmental Planning and Assessment Regulation 2000 cll 49, 55; Land and Environment Court Act 1979 (NSW), ss 34, 34AA; Lane Cover Local Environmental Plan 2009 (NSW) cll 2.7, 4.3, 4.4, 4.6, 6.1A; State Environmental Planning Policy (Biodiversity and Conservation) 2021 Pt 10.3, Div 2, CH 10, ss 10.2, 10.10, Schs 9-12; State Environment Planning Policy (Building Sustainability Index: BASIX) 2004 (NSW); State Environmental Planning Policy (Resilience and Hazards) 2021 ss 2.10, 2.11, 2.12, 4.6; Sydney Regional Environmental Plan (Sydney Harbour Catchment) 2005 (NSW).
Zahra Family Day Care Pty Ltd v Secretary, Department of Education [2022] NSWCATAD 298
ADMINISTRATIVE LAW- Education and Care Services National Law – Operator approval – Breach of condition of approval – Objects and Principles of National Law – Children – Childcare Services –whether stay is desirable - interim stay.
Children (Education and Care Services) National Law; Children (Education and Care Services National Law Application) Act 2010 (NSW); Civil and Administrative Tribunal Act 2013.
Kouzi v Sutherland Shire Council [2022] NSWLEC 1463
DEVELOPMENT APPLICATION – childcare centre – amended plans and further information – conciliation conference – agreement reached between the parties – orders made.
Education and Care Services National Regulation regs 107, 108; Environmental Planning and Assessment Act 1979 (NSW), ss 4.15, 4.16, 8.7, 8.15; Environmental Planning and Assessment Regulation 2000, cl 55; Land and Environment Court Act 1979, ss 34, 39; State Environment Planning Policy No 55- Remediation of Land; State Environmental Planning Policy (Resilience and Hazards) 2021 s 4.6; State Environmental Planning Policy (Transport and Infrastructure) 2021 s 3.22; Sutherland Shire Local Environmental Plan 2015 cl 6.4, 6.16, 6.18.
Malek Fahd Islamic School Limited v Minister for Education and Early Childhood Learning [2002] NSWSC 1176
ADMINISTRATIVE LAW – orders in the nature of certiorari – operation of s 69 of the Supreme Court Act on determination of a Minister – construction of the Education Act and discretion of a Minister as to whether to recover financial assistance and the amount of financial assistance – engagement with clearly articulated argument – unreasonable or disproportionate response – mandatory considerations - operation of Limitation Act – when cause of action accrues – no legal error – no jurisdictional error.
An Act for the better Government of Her Majesty’s Australian Colonies 1850, 13 & 14 Vic I, c 59; An act to make provision for the better Administration of Justice in the colony of Victoria 1852 (Vic); Australian Education Act 2013 (Cth); Civil and Administrative Tribunal Act 2013 (NSW), s 83; Commonwealth Constitution, ss73, 75; Corporations Act 2001 (Cth), s 9; Education Act 1990 (NSW), ss 4, 5, 6, 20A, 21, Pt 5, Pt 5A, Pt 6, Pt 7, 37, 46, 47, 50, 52, 54A, 55, 57A, 59, Pt 7 Div 3, 83B, 83BA, 83C, 83D, 83E, 83F, 83G, 83H, 83I, 83J, 83K, 83L; Limitation Act 1969 (NSW), ss 14, 55, 63; Supreme Court Act 1970 (NSW), ss 23, 63, 69, 91.
Choi v Secretary, Department of Justice and Communities [2022] NSWCA 170
APPEALS – Procedural fairness – Denial of procedural fairness – Where primary judge alleged to have worn a brown suit and no tie – Whether failure of primary judge to wear a robe and wig a denial of procedural fairness or a breach of the Court Attire Policy – No denial of procedural fairness
APPEALS – Right of appeal – Relationship with judicial review – Where applicant sought leave to appeal from two decisions of the primary judge and judicial review of the same two decisions – Whether primary judge was exercising an administrative function in light of his Honour’s omission to wear robes and a wig.
CIVIL PROCEDURE – Summary disposal – Dismissal of proceedings – Abuse of process – Whether judicial review proceedings an abuse of process.
APPEALS – Leave to appeal – Principles governing – Public importance.
APPEALS – From exercise of discretion – Whether House v The King (1936) 55 CLR 499; [1936] HCA 40 type error disclosed by the primary judge.
Civil and Administrative Tribunal Act 2013 (NSW), ss 4(1)(d), 41, 80(2)(a), 83(1); Civil Procedure Act 2005 (NSW), ss 56 and 98(4)(c); Civil Procedure Regulation 2017 (NSW), ss 41, 80(2)(a) and 83(1), cl 11(1); Court Security Act 2005 (NSW), ss 4, 9, 9A and 9B; Government Information (Public Access) Act 2009 (NSW), ss 12(2)(e), 65(1), 68(1), 80(c), 80(j), 100, 101(1) and 125; Government Sector Employment Act 2013 (NSW); Privacy and Personal Information Protection Act 1998 (NSW); Uniform Civil Procedure Act 2005 (NSW), rr 1.12, 4.10(5)(b), 13.4(1), 36.15, 16.16, 36.16, 42.1, 49.19, 50.12, 51.10(1)(b) and 59.10; Vexatious Proceedings Act 2008 (NSW), s 7.
Croker v Health Care Complaints Commission [2022] NSWCATAD 294
ADMINISTRATIVE LAW-freedom of information- government information public access-complaint handling-excluded information-invalid application-Government Information (Public Access) Act 2009 (NSW)Administrative Decisions Review Act 1997 (NSW); Civil and Administrative Tribunal Act 2013 (NSW); Government Information (Public Access) Act 2009 (NSW).
Regulation and other miscellaneous instruments
Public Holidays Amendment (National Day of Mourning for Queen Elizabeth II) Order 2022 – published LW 13 September 2022.
Conveyancing (General) Amendment (Transport Asset Holding Entity of New South Wales and Landcom) Regulation 2022 – published LW 9 September 2022.
Environmental Planning and Assessment Amendment (Parramatta City Centre Development Levy) Regulation 2022 – published LW 9 September 2022.
Environmental Planning and Assessment Amendment (Waratah Super Battery Project—Munmorah) Order 2022 –published LW 9 September 2022.
Water Sharing Plan for the Macquarie-Bogan Unregulated Rivers Water Sources Amendment Order 2022 – published LW 9 September 2022.
Treasurer’s Direction TD22-27 - Amendment to TD 21-04 – published LW 2 September 2022.
Water Sharing Plan for the Murray Alluvial Groundwater Sources Amendment Order 2022 – published LW 2 September 2022.
Explosives Amendment (Exemptions) Regulation 2022 – published LW 2 September 2022.
Environmental Planning and Assessment Amendment (Notice Requirements) Regulation 2022 – published LW 2 September 2022.
Biosecurity Order (Permitted Activities) Amendment Order 2022 (No 2) – published LW 2 September 2022.
Associations Incorporation Regulation 2022 – published LW 31 August 2022.
Building and Construction Industry Long Service Payments Regulation 2022 – published LW 31 August 2022.
Independent Pricing and Regulatory Tribunal Regulation 2022 – published LW 31 August 2022.
Subordinate Legislation (Postponement of Repeal) Order (No 2) 2022 – published LW 31 August 2022.
Surveillance Devices Regulation 2022 – published LW 31 August 2022.
Environmental Planning and Assessment Amendment (Sustainable Buildings) Regulation 2022 – published LW 29 August 2022.
Environmental Planning Instruments
Burwood Local Environmental Plan 2012 (Amendment No 23) – published LW 9 September 2022.
Campbelltown Local Environmental Plan 2015 (Map Amendment No 8) – published LW 9 September 2022.
Cessnock Local Environmental Plan 2011 (Map Amendment No 3) – published LW 9 September 2022.
Maitland Local Environmental Plan 2011 (Map Amendment No 3) – published LW 9 September 2022.
Mosman Local Environmental Plan 2012 (Amendment No 12) – published LW 9 September 2022.
Parkes Local Environmental Plan 2012 (Amendment No 7) – published LW 9 September 2022.
Shellharbour Local Environmental Plan 2013 (Amendment No 26) – published LW 9 September 2022.
Sydney Local Environmental Plan 2012 (Map Amendment No 1) – published LW 2 September 2022.
The Hills Local Environmental Plan 2019 (Map Amendment No 1) – published LW 2 September 2022.
Tweed Local Environmental Plan 2014 (Map Amendment No 1) – published LW 2 September 2022.
Woollahra Local Environmental Plan 2014 (Amendment No 25) – published LW 2 September 2022.
Campbelltown Local Environmental Plan 2015 (Map Amendment No 7) – published LW 2 September 2022.
State Environmental Planning Policy (Exempt and Complying Development Codes) Amendment (Change of Use) 2022 – published 1 September 2022.
State Environmental Planning Policy Amendment (Inner West) 2022 – published LW 31 August 2022.
State Environmental Planning Policy (Sustainable Buildings) 2022 – published LW 29 August 2022.
Act Compilation- Commonwealth
A New Tax System (Australian Business Number) Act 1999 12/09/2022 – Act No. 84 of 1999 as amended.
National Health Reform Act 2011 30/08/2022 – Act No. 9 of 2011 as amended
Blog Article Contentuced by Government
High Speed Rail Authority Bill 2022 – 8 September 2022.
Financial Services Compensation Scheme of Last Resort Levy (Collection) Bill 2022 – 8 September 2022.
Treasury Laws Amendment (2022 Measures No. 3) Bill 2022 – 8 September 2022.
Income Tax Amendment (Labour Mobility Program) Bill 2022 – 8 September 2022.
Foreign Acquisitions and Takeovers Fees Imposition Amendment Bill 2022 – 8 September 2022.
Financial Services Compensation Scheme of Last Resort Levy Bill 2022 – 8 September 2022.
Financial Sector Reform Bill 2022 – 8 September 2022.
Financial Accountability Regime Bill 2022 – 8 September 2022.
Counter-Terrorism Legislation Amendment (AFP Powers and Other Matters) Bill 2022 – 8 September 2022.
Atomic Energy Amendment (Mine Rehabilitation and Closure) Bill 2022 – 8 September 2022.
Parliamentary Privileges Amendment (Royal Commission Response) Bill 2022 – 7 September 2022.
Emergency Response Fund Amendment (Disaster Ready Fund) Bill 2022 – 7 September 2022.
National Health Amendment (General Co-payment) Bill 2022 – 7 September 2022.
Social Services and Other Legislation Amendment (Incentivising Pensioners to Downsize) Bill 2022 – 7 September 2022.
Environment Protection and Biodiversity Conservation Amendment (Climate Trigger) Bill 2022 [No. 2] – 5 September 2022.
Environment Protection and Biodiversity Conservation Amendment (Climate Trigger) Bill 2022 – 5 September 2022.
Anti-Money Laundering and Counter-Terrorism Financing Amendment (Making Gambling Business Accountable) Bill 2022 – 5 September 2022.
Disclaimer
The information in this publication is of a general nature and is not intended to address the circumstances of any particular individual or entity. Although we endeavour to provide accurate and timely information, we do not guarantee that the information in this article is accurate at the date it is received or that it will continue to be accurate in the future.
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