Clark, Eugene --- "Book Review - Towards a More Innovative Australia" [2002] JlLawInfoSci 7; (2002) 13(1) Journal of Law, Information and Science 122

• BOOK REVIEWS
• Towards a More Innovative Australia
• Principles of IP Compliance within a Framework of KM

BOOK REVIEWS
Towards a More Innovative Australia

Intellectual Property in Australia (3rd Edition)

MCKEOUGH, JILL, STEWART, ANDREW AND GRIFFITH, PHILIP (2004)

Lexis-Nexis Butterworths, Australia, ISBN 0 409 31797 7. 685 pages including index. $A110

Australian Patent Law

BUCKNELL, D, BEATTIE, K, GOATCHER, A AND ROFE, H (2004)

Lexis-Nexis Butterworths, Australia, ISBN 0 409 31987 2 395 pages including index. $A 135

Intellectual Property Collection 2004

BUTTERWORTHS

Lexis-Nexis Butterworths, Australia, ISBN 0 409 32138 9 881 Pages $A 85

In an Information Age, the need to track intellectual property (IP) law developments and to manage an organisation’s IP is increasingly important. The three books mentioned above emphasise the growing importance of IP and will greatly assist lawyers, law students, managers and others in achieving a better understanding of their rights and responsibilities in relation to IP. That there is a great need for IP literacy is seen from the results of the PricewaterhouseCoopers Intellectual Property Loss Survey Report of 2002. It found that almost 30% of respondents had at least one intellectual property loss. The most vulnerable sector was property/business services. Externally, a failure to protect one’s IP may result in a crippling blow to a business. Internally, IP issues can result in bitter ownership disputes between employees and their employer.^[1]

The third edition of McKeough, Stewart and Griffith has been completely updated to account for the many recent changes in the legal regime governing intellectual property. These changes include a detailed discussion of the Design Act 2003; the Digital Agenda reforms to Copyright, the 1995 Trade Marks Act which reflect Australia’s obligations under TRIPS, moral rights legislation and changes to Australia’s patent laws. Recognising the importance of e-commerce, the third edition also deals with domain names and other legal issues relevant to software (eg patenting). Also covered are important doctrines such as confidentiality and passing off. The final chapters treat the important topic of IP commercialisation, licensing, franchising and the tension between IP law protection and promotion of competition. The authors are to be commended for producing a highly readable text, especially given the technical nature of the subject matter.

I also greatly appreciated the fact that the text is not merely ‘descriptive’ but presents an in-depth and critical examination of an increasingly significant area of economic and cultural activity for Australia. One brief example of this is the issue of whether the Copyright Act adequately protects Indigenous Artists. The authors point out, for instance, that there is no recognition in the moral rights legislation of communal ownership of Indigenous artwork. The Act instead assumes only individual ownership. Group custodianship is very important to Indigenous peoples, yet copyright laws do not at all take this into account.

Australian Patent Law is similarly an excellent and timely publication. Australia has recently amended its patent laws, getting rid of the seldom used petty patents and replacing them with an innovation patent. The logic of the innovation patent stems from the fact that standard patents last for 20 years, but can take a year or more to acquire, including numerous responses to the patent office inquiries. This makes standard patents unsuitable for smaller inventions. The innovation patents will provide protection for only eight years. They are designed to give businesses protection in relation to more minor applications.^[2]

Australian Patent Law brings together in one place the patent law, cases, regulations, commentary and Australian Patents Office practice. It also provides a very useful comparative table between the 1952 and 1990 Patent Acts.

Finally, given the fact that IP law is so heavily based upon several key statutes and these statutory regimes have been amended several times over the years, Butterworths has made useful compilation of the Patents Act, Trade Marks Act, and Copyright Act together with consolidated amendments. Also, included is the new Designs Act 2003 which was passed on 17 December 2003 and commences six months from the date of Assent.

If I have one grumble about these works, it is that I would have preferred that greater attention be given to the context within which managers and leaders of organisations manage their IP specifically and knowledge generally, ie to knowledge management (KM). Knowledge management is a multi-disciplinary approach to achieving organisational objectives by making the best use of knowledge. KM focuses on processes such as acquiring, creating and sharing knowledge and the cultural and technical foundations that support such processes. It is a system integrating people, IT, processes and documentation. Knowledge management involves the development and use of IT systems to leverage the law firm's collective wisdom by the identification, capture, dissemination and use of the knowledge of lawyers and their staff.

When knowledge can become embedded into an organisation's routines and processes, it can add great value and lead to better practice and the development of new products, ie knowledge applied to knowledge. Knowledge management is about empowering every individual to add value to the organisation’s data and apply it in ways that create new knowledge and wisdom for the organisation. KM is an aspect of an organisation’s culture--a culture of sharing information and empowerment of people within the organisation. In this way, knowledge management is closely tied to innovation. A recent survey of knowledge practices found that in the most successful corporations there existed a culture that fostered a desire for knowledge so that it is continually discovered, created, applied and distributed throughout the organisation.^[3]

Critical to the success of this culture was the presence of incentives that rewarded employees to augment their knowledge and the organisation's knowledge base.^[4] In terms of application, most organisations have a large amount of information that is under utilised. In terms of distribution of knowledge, multiple channels of communication are the key. The most successful companies also have a deliberate policy of trying to foster creativity amongst staff. Knowledge management is not a once off affair. It must be an ongoing process so that the organisation and the individuals who comprise it continue to grow and learn.^[5]

Knowledge management in its early days was concerned with taking explicit knowledge and leveraging against it. It is now moving on to a second stage where the goal is to get at tacit knowledge, residing in the heads of its top people, and embedding that knowledge, making it accessible to the whole organisation and able to be leveraged to create new knowledge products. This tacit knowledge is often very difficult to articulate, but the effort to do so can result in the biggest gains.

New technology is also coming to the aid of knowledge management. For example, Legal XML makes exchanging information much easier so that it can be used to support better decision making. To provide readers with a sense of what KM entails, consider the following:

Principles of IP Compliance within a Framework of KM

1. Understand and appreciate the vital role played by knowledge management within the organisation

2. Establish the business case for knowledge management

3. Need to identify the IP. It is surprising how many firms have failed to undertake the first step of knowledge management by conducting an inventory of what IP they own and use. Others have done so as a one-off exercise, but failed to update their IP portfolio.

4. Structure the knowledge management objectives so that they support the strategic goals of the organisations

5. Go from good record keeping to knowledge sharing, building a community of knowledge that is shared not only with employees, but with clients/customers.

6. Develop in all employees, the practice of constantly looking for ways to leverage IP, know how, etc.

7. Formulate policies that make it clear to and binding upon staff. All in the organisation need to know their rights and responsibilities in relation to the IP created. Ownership issues need to be thought out and policies developed to ensure maximum protection of IP, maximum commercial benefit out of IP, and risk minimisation from the use of IP belonging to others.

8. Build an organisational culture that motivates and rewards people for best knowledge practices and encouragement to develop and commercialise IP.

9. Procedures and Policies should be in place to regularly review IP holdings.

10. Develop policies that are aligned with all stakeholder interests in IP.

11. Maximise the organisation’s IP portfolio by using IP to gain the largest possible commercial advantage.

12. Quantify (might use benchmarking) the organisation's IP assets and make a regular report about IP in the organisation. Report on new IP, commercialisation of IP and audit the reporting.

13. Senior management needs to address importance of IP management and need for an IP audit. Despite their importance, they are not yet commonplace. Steps in an IP Audit:

• Identify existing and hidden IP

• Determine origin and legal ownership of IP

• Evaluate the adequacy of IP protection as well as integration of IP management within the overall strategy and operations of the organization

14. Identify and manage any potential conflicts of interest in relation to IP.

Eg: financial interests in competing organisations.

15. Consider appointing an IP officer. Knowledge management is so important that many organisations have appointed a specifically designated IP Officer to ensure that IP issues are permanently on the firm's agenda.

16. Ensure the IP policy is supported from the top. If senior management doesn't emphasise its importance, it won't happen.

17. Keep staff up to date on new developments in the law, new IP policy, and so on.

In conclusion, IP issues will be on Australian government and organisational agendas for a long time to come. Just one recent example is the Free Trade Agreement with the US. While the Free Trade Agreement with the US could be worth billions, a major area is of concern—the enforceability of IP rights. US trade officials are required to ensure that the provisions of any bi-lateral agreement governing IP rights apply the same level of protection as exists in the US. Thus the recording and pharmaceutical industries are working hard with trade officials. In general the US has very strong protection of IP rights and Australia can’t help but take notice.^[6] Similarly, lawyers, managers, students and others can’t help but take notice of the growing importance of IP Law and these three works make that task considerably easier.

Reviewed by Eugene Clark, Professor of Law, Head of School, University of Canberra

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^[1] Robertson, R (2002) 'Get the brains trust working on IP, The Australian Financial Review, 2 April, p. 57

^[2] See www.IPAustralia.gov.au

^[3] Hauschild, S, Licht, T and Stein, W (2001), 'Creating a Knowledge Culture' McKinsey Quarterly, No 1, p. 74.

^[4] Ibid, p. 77.

^[5] Ibid, pp. 79-81.

^[6] Willis, M (2003) ‘Trade deal’s protected laws’, The Australian Financial Review 23 July, p. 55.