Intellectual Property Rights and Research Contracts in South Africa

Research Contracts and IP Services THRIP & Intellectual Property Dr Andrew Bailey IP Manager

Industry Partner Information Research Contracts and IP Services Information sheet for Industry Partners sent out with the call Provides simple details around: Intellectual Property Rights from Publicly Financed R&D Act Intellectual Property licensing (access) options and what they mean IP Declaration Form Confirms Industrial Partner is aware of the IPR Act Indicates the type of IP access that they require

IPR Act Research Contracts and IP Services Intellectual Property Rights from Publicly Financed Research & Development Act (Act 51 of 2008) Aims to encourage protection and commercialisation of IP from SA Government funded research for the good of SA citizens Governs IP from publicly financed research even if the financing is only partial THRIP is public finance Impacts on the relationship with the funder Default: IP owned by UCT Obligation to commercialise Benefit share for IP creators stipulated

IPR Act Research Contracts and IP Services Details on RCIPS website Download Act & Regulations Layman s guide direct industry partners to it Download UCT presentation & soundtrack www.rcips.uct.ac.za (IP Tab) Learn on Vula IP Savvy (module on IPR Act)

IP Ownership Options Research Contracts and IP Services UCT has a costing model that is approved by the National Intellectual Property Management Office (NIPMO) who enforce the IPR Act. The model determines the Full Cost of doing research at the university. Depending on whether projects are conducted at Full Cost or not, determines the ownership of the Intellectual Property emanating from the research project. Faculty Finance Offices will have the necessary templates or be able to assist PI s to determine the Full Cost of their projects. When the funder pays full cost or above, they may own the IP. It is a negotiation and UCT may charge a margin above full cost, to reward the researcher s expertise.

Ownership of IP Ownership UCT The default position in terms of the Act is for UCT to own the IP. The IP may be made accessible to the funder by licensing, which may be exclusive. Can motivate and seek approval from NIPMO for assignment to funder at end of project. Whilst IP may not be jointly owned, benefit from commercialisation may be shared Joint Four conditions need to ALL be met: 1. Contribution of resources [money, background IP, people] 2. Agreement to commercialise the IP 3. Benefit share with IP creators (provided for in UCT IP Policy) 4. Joint creation of the IP. If patented, at least one person from funder s team must be named as an inventor. Funder When the funder pays full cost or above, they may own the IP It is a negotiation and UCT may charge a margin above full cost, to reward the researcher s expertise Research Contracts and IP Services Full Cost < A B < C = or >

IP & THRIP Research Contracts and IP Services IP Agreements must be entered into before THRIP funding will flow Ownership & exploitation of IP IPR Act compliant Agreement may not restrict publication > 3 yrs after end of project for IP purposes UCT Confidential Thesis Procedure 6 month blocks Maximum 3 years

IP Agreements Research Contracts and IP Services Background IP work that has been done previously (could have been patented) Project or Foreground IP created during the course of the THRIP project

Access to the IP (Below Full Cost Projects) Research Contracts and IP Services Ownership is not necessarily everything! Its about access. Exclusive license may achieve essentially same effect as ownership. They are the only party permitted to exploit the IP commercially IPR Act requires Exclusive Licence to be on market-related terms Need to acknowledge contribution towards the creation of IP Does not need permission from NIPMO (South African partners only) Can build access to an Exclusive Licence into funding agreement / research contract first right of refusal / option agreement

Access to the IP Research Contracts and IP Services Non-exclusive licenses are also possible The university would be able to license to third parties. Likely that the rate would be higher though to parties who had not funded the research Can at UCT s discretion be offered on a royalty-free basis to the funder for their (or their subsidiaries) own internal commercial use. NIPMO will approve this arrangement Not included in the Industry info pack Assessed on a case-by-case basis Influenced by amount of background IP that is drawn on RCIPS needs to report on any royalty-free licences that are granted New

Access to the IP Research Contracts and IP Services Assignment of IP = transfer of ownership Can refer to NIPMO to seek permission for assignment of the IP to the company Need to motivate why an exclusive license will not be adequate = best mode of commercialisation Often a requirement of investors (Venture Capital) Can only be done at the end of the project once IP has been created (risk for funder that it will not be approved)

Walk-in Rights Research Contracts and IP Services Government may step in, in terms of the IPR Act Lack of commercialisation Consultative process For emergency, health or security issues Act of Parliament Will come to licensee first to see if they can fulfill the need

Fundable Activities Research Contracts and IP Services Legal Costs (IP Agreements) Could be useful to Funder R50k per project (plus R50k per SMME participating) RCIPS has standard contract that will be used as a basis Costs for patent registration (need to clarify THRIP Applicant ) Patent litigation costs capped at R1m

Fundable Activities Research Contracts and IP Services Patents Funding available to commercial partner to support patenting related to the project RCIPS must be advised of any patent application and the patent must be filed by UCT

HEI Ownership of Spin-Outs Research Contracts and IP Services Non-Qualifying Costs (Section 8) Contributions from companies owned wholly or partly ( 25%) by UCT when the research is done at UCT NEW

Reporting Research Contracts and IP Services Information regarding pending / secured patents - RCIPS can provide the patenting info for reporting purposes Must alert dti if they are not permitted to disclose information to the public if IP has not been protected. Else it will be assumed that they may communicate freely

Contact RCIPS Research Contracts and IP Services Dr Andrew Bailey Andrew.Bailey@uct.ac.za 021 650 2425 Research & Innovation 2 Rhodes Ave Mowbray www.rcips.uct.ac.za