New IP rights, and what it means for UCT

The Intellectual Property Rights from Publicly Financed Research and Development Act was signed by the President and appeared in the Government Gazette on 22 December 2008. Its primary goal is to ensure that IP outcomes of publicly financed R&D are protected and commercialised for the benefit of the people of South Africa - be it social, economic, military or some other benefit.

The Act applies to South African government-funded (or partially funded) research and development conducted by UCT using funds from the South African State or State Funding Agency/Organ that funds research and development. IP arising from the research becomes owned by UCT (or partially owned if other funders participate in a project).

In terms of the Act a National IP Management Office (NIPMO) has been established which will interact with Offices of Technology Transfer, which universities are obliged to establish - this function is already being carried at UCT by Research Contracts and IP Services (RCIPS). The Act prescribes a number of obligations for RCIPS ranging from managing disclosures and deciding whether inventions have commercial potential and IP protection (eg patents) considered, to commercialisation of the IP that is held by UCT and reporting to NIPMO.

Obligation on researchers

Researchers using State funding are obliged to disclose any inventions to RCIPS prior to publication of their research. Publication in this sense would be anything involving 'public disclosure' which would destroy the opportunity to apply for patent protection of an invention. Examples of public disclosure includes: oral presentations at external meetings and conferences; online informal 'blogs' and websites; submission of a thesis for examination; publication. UCT Invention Disclosure Forms can be downloaded from here and should ideally be submitted to RCIPS two months prior to intended publication (a shorter timeline, although not ideal, can be accommodated).

Although procedures are currently being finalised, it is anticipated that principal investigators will need to declare that a) they are aware of this obligation when receiving State funding and b) at the end of the project that either protectable IP was disclosed ahead of any publication, or that there was no such IP.

What IP is involved?

The Act defines IP as "any creation of the mind that is capable of being protected by law from use by any other person, whether in terms of South African law or foreign intellectual property law, and includes any rights in such creation, but excludes copyrighted works such as a thesis, dissertation, article, handbook or publication which, in the ordinary course of business, is associated with conventional academic work". Note although the thesis or paper is exempt [the actual written work which is covered by copyright] the invention that may be described is not exempt!

Impact on UCT funders and commercialisation partners

Key points are:

• A Funder can wholly own the IP generated if they pay for the R&D conducted by UCT according to a 'full-cost model' (i.e. inclusive of indirect and direct costs as defined in the Regulations). Templates on UCT's current full cost model project costing can be downloaded from Chapter 2.12 of the Research Handbook.
• A Funder may become a co-owner of IP from publicly financed R&D provided that: there has been a contribution in resources (can be background IP); the IP is created jointly; there are arrangements for benefit sharing by the creators and UCT the institution concludes an agreement for the commercialisation of the IP.
• Although not preferable, an exclusive license can be granted to a licensee as long as they have the capacity to commercialise the IP and it is done in a manner that benefits the country.
• The nature and conditions of the license agreement are determined by UCT, but preference needs to be given to non-exclusive licensing, BBBEE and small enterprises.
• The State retains 'walk-in rights' for health, security and emergency needs of the Republic, for IP that is subject to the Act (ie not full-cost model-funded R&D).
• NIPMO must be informed of offshore IP transactions and they will issue guidelines for the offshore IP transactions.

UCT IP policy

The UCT IP Policy will be revised during the course of 2009 to take the Act into account, especially the different arrangements around benefit share by inventors. Under the new Act, inventors share 20% of revenues accruing to UCT up to R1,000,000 in revenue and 30% of all revenues exceeding this amount.

Seminars

Seminars will be scheduled in different faculties across the campuses to provide researchers with information on the new Act and to answer questions. A schedule will appear here and Departments will be notified.

Should you have any additional queries, please contact Dr Andrew Bailey, IP Manager, RCIPS (or 021 650 2425).