intellectual_property_guidelline

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Government of Yukon

Intellectual PropertyGuideline

For

Custom Software Development Contracts

Table of ContentsPage

1. Introduction .... 12. Principles . 13. Interpretation .. 24. Objective .. 35. Scope .... 36. Authority .. 37. Application .. 38. Guidelines ... 49. Exceptions .. 510. Implementation .. 611. Management and Evaluation .. 6

Attachment #1:IP Guideline Framework .................................................... 7

Department of Highways and Public WorksInformation & Communications Technology (ICT)

Approved By: Information Resource Management Committee (IRMC)Approval Date: February 22, 2005.

Strategic Objective: To increase the commercial development potential ofIntellectual Property created by Yukon businesses in Custom Software DevelopmentContracts while protecting Government rights to contract deliverables and retention ofIP ownership if required.


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1. Introduction

1.1 This guidelineprovides a framework for the Intellectual Property (IP) arising out ofCustom Software Development Contracts. It allows for the IPto be ownedby theContractorwhile protecting the Governmentof Yukons rights to use the contractDeliverablesand retain IPownership where it deems it to be in its best interests.

1.2 The IPguideline supports the socio-economic objectives of the Governmentensuring that procurement activities benefit Yukon residents and Yukon businesseswhere practicable1and diversify the economy by promoting the development ofindustries such as information technology2; and addresses the Yukon IT SectorStrategyto provide for vendor control over intellectual property3.

1.3 The IPguideline consists of -principles and interpretation; objective and scope;authority and application; guidelines and exceptions; and implementation,management and evaluation responsibilities.

1.4 The IPguideline is expected to evolve in terms of its scope and application as

experience is gained both in terms of ensuring Governmentrights and interests areprotected and having a positive impact on Yukon IT sector development.

2. Principles

The IPguideline is based on the following six principles:

2.1 Custom Software Development (CSD) Contractsare undertaken to acquire specificDeliverablesat competitive prices and must provide the Governmentunrestricted,perpetual use of those Deliverablesand associated Intellectual Property.

2.2 CSD Contractsmust be assessed individually to ensure that the unrestricted,perpetual rights to contract Deliverablesare protected, now and into the future, and IPownership is retained where required by the Government.

2.3 The Governmentrecognizes that in giving up IP Ownershipit must retain the rightand ability to continue to have reciprocal arrangements with other jurisdictions for thepotential sharing of custom software.

2.4 Commercial development of IParising from CSD Contractsis not the role of theGovernmentand is best achieved by the private sector to contribute to economic growthand job creation.

2.5 The Governmenthas an overall responsibility for promoting economic growth and

job creation in the Yukon and has made specific provision for social and economicdevelopment objectives to be pursued through its procurement practices.

2.6 The Governmentsupports the Yukon IT Sector Strategyand, as one of theindustrys largest customers, has a key role to play both from an economic developmentperspective and to meet theinformation technology needs of the Government.

1Government of Yukon Contract Regulations

2Government of Yukon Throne Speech 2003-04

3Yukon Information Technology Sector Strategy


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3. Interpretation

The following terms and their interpretation apply in the IPguideline:

Artifact Any of the resulting works, products or Deliverablestypically created by the

Governmentor a Contractorduring the Custom Software Developmentprocess.

Background All Intellectual Property(IP) that existed or came into existence outside ofthe Custom Software Development (CSD) Contractand excluding Foreground(seeForegroundbelow).

Commercial Development- Any use, transformation and/or dissemination of theForegroundthat generates, or is intended to generate business for profit.

Contracting Authority Any government body or government employee authorizedpursuant to the Financial Administration Act, to enter into a CSD Contractwith aContractoron behalf of the Government.

Contractor Any person, partnership or corporation which supplies goods or servicesand constructs software under a CSD Contractwith the Government.

Custom Software Development (CSD) - Involves the creation of computer programsresulting in IP Foreground, ranging from entirely new development work to a substantiveamount of new code in existing software programs, and as distinct from the purchaseand installation of pre-existing packages or products which does not.

Custom Software Development Contract A contractual agreement between theGovernmentand a Contractor involving the creation of computer programs and IPForeground.

Deliverables- All computer code, custom-developed software, documentation, supplierwork information and other assets, materials, recorded information, and products of anykind, to be delivered as part of the CSD Contract.

Department A department as defined in the Financial AdministrationAct, whichincludes applicable crown corporations.

Deputy Head- The deputy head as defined in the Public Service Act.

Foreground- All Intellectual Propertyfirst conceived, developed, produced or reduced topractice by a Contractoras part of the work under a CSD Contract(see Background

above).

Government Any use of the word Governmentrefers to the Government of Yukonunless indicated otherwise.

Government ActivitiesIncludes the existing (prior to April 1, 2005) ability to sharecustom developed software among Governmentdepartments, with other levels ofgovernment or public bodies in the Yukon and with other federal, provincial and territorialgovernments.


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Information Resource Management Committee (IRMC) A committee of all DeputyHeads responsible for developing and coordinating the corporate view on themanagement and integration of information resources, as set out in GeneralAdministrative Manual Information Technology Management Directive 2.3issued underthe Financial Administration Act.

Intellectual Property (IP) Any rights resulting from intellectual activity including allintellectual creativity legally protected through patents, copyright, industrial design andintegrated circuit topography, or subject to protection under the law as trade secrets andconfidential information.

Intellectual Property Owner(or Ownership) Refers to the individual, partnership orcorporation having the ultimate legal control over particular intellectual property rights.

Sponsoring Department- The department which has budget authority for a particularCSDproject.

Subcontractor A corporation, partnership or individual awarded a contract by aContractorand under that contract supplies goods or services or performs work on aCSD Contractfor which the Contractorwas engaged by the Government.

Yukon Business Has the same meaning as in the Contracting Directivemade pursuantto section 23 of the Financial Administration Act.

4. Objective

4.1 The objective of the IPGuideline is to increase the commercial developmentpotential of Intellectual Propertycreated by Yukon Businessesin the course of a CustomSoftware Development Contractwhile protecting Governmentrights to contract

deliverables and retention of IPownership if required.

5. Scope

5.1 The scope of the IPguideline encompasses the area of Custom SoftwareDevelopmentinvolving the creation of IP, including application software, databasesoftware, web software, among others.

6. Authority

6.1 The IPguideline is issued under the authority of the Information ResourceManagement Committee (IRMC), as approved by that body at their meeting of February

22, 2005 for implementation effective April 1, 2005.

6.2 IRMCis responsible for decisions on any substantive changes, exceptions andother matters referred by Departments, and for oversight of the strategic objective of theIPguideline.

7. Application

7.1 The IPguidelineapplies to all Departmentsincluding Yukon Housing Corporationand Yukon Liquor Corporation.


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7.2 The guideline applies to the Foreground that arises by virtue of a Custom SoftwareDevelopment Contractand that is created by the Contractor.

7.3 The guideline does not affect existing IPOwnershiprights of the Government, theContractor, or a third party of their respective Backgroundmaterial.

7.4 The guidelinedoes not affect IP Ownershiprights between the Contractorand anyof its subcontractors, except as it pertains to the Contractorobligation to ensureagreements are in place dealing with any IPrights of subcontractors under a CustomSoftware Development Contractwith the Government.

7.5 The guideline does not apply to the ownership of, or the right to use, any trademarksor trade names.

7.6 The guideline does not apply to personal information (as defined under the Accessto Information and Protection of Privacy Actor related legislation), nor to Foregroundinvolving any compilation or database, containing personal or government-supplied

information, if that Foregroundcannot be exploited without using that personal orGovernment-supplied information.

7.7 The guideline does not apply to custom software development work performedinternally by Governmentemployees for which IP Ownershipwill continue to be ownedby the Government.

7.8 The guideline does not apply to IP Ownershipin Custom Software DevelopmentContractsprior to the effective date of the IPguideline, which under previous contractswill continue to be owned by the Governmentunderthe Copyright Act, unless previousor subsequent agreements exist to the contrary.

8. Guidelines

8.1 The Governmentwill provide Yukon Businessesownership of the IntellectualPropertyForegroundcreated by the Contractorunder a Custom Software DevelopmentContractwith the Governmentof Yukon, subject to the rights retained in Section 8.2 andexceptions in Section 9 below.

8.2 Where IP Ownershipwill vest with the Contractor, the Governmentrequires theContractorto provide royalty-free, perpetual, unrestricted, noncommercial rights to use,or have used by a third party, the CSD contractForegroundand any includedBackgroundfor all Government Activities. The rights to use includes, without beinglimited to, the right to reproduce, modify or enhance, and to use in future software

development contracts.

8.3 Where IPownershipof Foregroundis being provided, the Contracting Authoritywillindicate this in writing to the Contractor, along with the rights required by theGovernmentand any applicable conditions, in or during:

(1) the request for proposal (of a competitive contract), or(2) contract negotiations (of a sole-sourced contract);

and, if rejection of IPOwnershipis applicablethe Contractoris required to indicate this inwriting.


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8.4 Where the Governmentis establishing any special conditions (e.g. royalties, sharinglimits) as it relates to the IP Ownershipin a Custom Software Development Contract,such conditions should be specified in the request for proposal or contract negotiations,and in the contract between the Governmentand the Contractor, but may besubsequently established if mutually agreed by the contracting parties.

8.5 If requested, the Governmentmay transfer IPownership to the ContractoronCustom Software Development Contractsentered into prior to the effective date of the IPguideline, subject to the protection of Governmentrights and any applicable exceptionsas outlined in the guidelineand any special circumstances.

8.6 Where the Contractorowns the Foreground, the Contractormay require that theGovernmentprovide, at the Contractor'sexpense, any reasonable assistance to enablethe Contractorto secure IPrights in the Foreground.

8.7 Where Custom Softwareuser rights are being shared, or considered for sharing,with another public body or jurisdiction as part of Government Activities, the Governmentwill provide them with Contractorcontact information and inform the Contractorof

sharing and, if appropriate, help facilitate their involvement.

8.8 If requested by the Contractorand there are no negative implications, theGovernmentmay grant a license to the Contractorfor use of Government Backgroundorcomponents thereof when it is required for use to commercialize the Foreground.

9. Exceptions

9.1 The Governmentwill retain IPownership of the Foregroundunder a CustomSoftware Development Contractwhere one or more of the following exceptions apply:

(1) national security precludes Contractorownership of the Foreground;(2) statutes, regulations, or prior obligations of the Governmentto a third party or

parties preclude Contractorownership of the Foreground;(3) the Contractordoes not wish to have IPownership of the Foreground;(4) the main purpose of the Custom Software Development Contractor of the

deliverables contracted for is to:(a) generate knowledge and information for public dissemination,(b) augment an existing body of Government-owned Background,(c)deliver a component or subsystem that will be incorporated into a complete

system at a later date, or(d) deliver an information system which integrates services across jurisdictions,

levels of government, programs and/or sectors.(5)the Foregroundconsists of material subject to copyright only with the exception of

documentation pertaining to the contract; or

(6) it is deemed justified and not provided for above and the Departmenthas soughtand obtained approval from IRMCfor the exception.

9.2 Where the Governmentretains ownership of the Foregroundby invoking anexception under Section 9 of the IPguideline, the Contracting Authoritywill inform theContractorthat the Governmentwill own the Foreground, or if applicable thecomponents thereof, and indicate the exception being invoked:(1) in the request for proposal (of a competitive contract), or(2) during contract negotiations (of a sole-sourced contract).


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9.3 Where the Governmentowns the Foreground, the Governmentmay require that theContractorprovide, at the Government'sexpense, any reasonable assistance to enablethe Governmentto secure IPrights in the Foreground.

9.4 Where the Governmentowns the IP Foregroundand there are no negativeimplications, the Governmentwill grant the Contractora license for use of the

Foreground, including the right to use the Government-owned design artifacts IPformaintaining and enhancing the software.

10. Implementation

10.1 Deputy Headsare accountable for the implementation of the IP Guidelinewithintheir Department, and for ensuring contracting personnel receive required orientationandresponsibilities are met.

10.2 Contracting Authoritiesare responsible for ensuring that all Custom SoftwareDevelopmentrequest for proposal documents and CSD Contractsare consistent withthe IPguideline.

10.3 Sponsoring Departments, if different than the Contracting Authority, remainresponsible for decisions regarding the ownership of IP Foreground.

10.4 The Governmentwill establish contract wording templates that reflect theobjectives and intent of the IPguideline for use by Contracting Authoritiesin CustomSoftware Development Contracts.

10.5 Departmentare responsible for ensuring records are maintained of their CustomSoftware Development ContractsIPownership, including whether the Government(1)retained IPownership and the exception clause(s) invoked, and (2) allowed forContractorIPownership and if rejected.

11. Management and Evaluation

11.1 Highways and Public Works - Information and Communications Technology(ICT)is responsible for providing advice and assistance to Departmentson the IPguidelineimplementation, managing and tracking its application, and for ongoing evolution andrefinement of the guideline in consultation with Departmentsand IT industry.

11.2 Economic Development, in consultation with Highways and Public Works - ICT, willbe responsible for periodically conducting an interdepartmental and IT industryevaluation of the IPguideline and its impacts, both intended and unintended, upon theContractorsand the Government.


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ensure fair, fiscally responsible ,accountable, open and competitive

contracting activitiesbenefit Yukon residents and Yukon

businesses where practicable

provide vendor control over IPdeveloped in government projects

diversify the economy by promotingdevelopment of industries

CUSTOM SOFTWAREDEVELOPMENT CONTRACTS

INTELLECTUAL PROPERTY GUIDELINE

IP

OWNERSHIPEXCEPTIONS?

CONTRACT DELIVERABLES

- products and services -

AUTHORITY

IRMC

IMPLEMENTATION

DEPARTMENTS

MANAGEMENT

Highways &Public Works

GOVERNMENTOWNS IP CONTRACTOROWNS IPYES

EVALUATION

EconomicDevelopment

BENEFITSTO GOVERNMENT

- IP rights-to-use & share protected- IP ownership, if required- potentially lower costs- IT sector development

BENEFITSTO IT SECTOR

- IP ownership, if no exceptions- IP rights-to-use, if available

- commercial products-services- IT business growth

ROLES & RESPONSIBILITIES

GOVERNMENT CONTRACTINGPOLICY OBJECTIVES

GOVERNMENT SUPPORT FORYUKON IT SECTOR STRATEGYBUSINESS DRIVERS

NO

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