A presentation I gave at the second global congress on IP and the Public interest,Rio de Janeiro, 16 December 2012

1. Effects of the Intellectual Property (IP) Regime on Generating Value
from Publicly Funded Research: An Exploratory Study of Two South
African Universities
Presented by
Dr Caroline B Ncube
University of Cape Town
caroline.ncube@uct.ac.za
@caro_ncube
Research team
Caroline B Ncube (UCT), Lucienne Abrahams (Wits) & Titi Akinsanmi (Wits)

2. Case Study
1. Research questions
2. Methodology
3. Summary of the Act
4. Insights gained : key concerns & experiences to date
5. Open access publishing & socialisation of research
6. Other models of deriving value from publicly funded research (EU, UK)
A positive Agenda
1. identify and prioritise forums and opportunities for advocacy
2. identify and prioritise key elements of an interdisciplinary research agenda; and
3. identify opportunities for future work in partnership on these key elements.
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3. Research Questions
South African Case Study Research
Overarching Open AIR research Question
question
How can existing or potential intellectual How does the Intellectual Property Rights
property systems be harnessed to from Publicly Financed Research and
appropriately measure and facilitate Development Act of 2008 impact
innovation and creativity for open collaborative research, innovation and
development in Africa? scholarly publishing in the health and
engineering sciences at the University of
Cape Town (UCT) and the University of
the Witwatersrand (Wits)?
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4. Sub-questions
(a) Prior to the Act how did UCT and Wits approach the IP protection of their scientific research
output?
(b) How does the Act impact commercialisation of innovation in the health and engineering
sciences?
(c) To what extent are publicly-funded research results being communicated through copyright and
open access to knowledge approaches?
• Key definitions: commercialisation, socialisation, intellectual property
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5. Methodology
• a doctrinal analysis of the legislation and regulations
• document analysis of annual research reports for 2010 and 2011 published by Wits
and UCT
• interviews with researchers, publishing academics and university IP management
personnel
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6. Summary of the Act
Disclosure and Ownership of Intellectual Property
Recipient has title to IP if project falls within scope of Act
Funder can have title to IP if project is full cost, i.e. falls outside scope of Act
Obligation to protect
NIPMO may protect in national interest where recipient elects not to
Institutional Arrangements Benefit Sharing Arrangements
o National IP Management Office (NIPMO) o 20% of initial gross revenues (R1m)
o Office of Technology Transfer (OTT) o 30% of nett revenues
Co-financed R&D Government Rights
o Option to exclusive licence o Non-exclusive licence for national needs
o Joint Ownership possible o Non-commercialisation
o Non-disclosure
Off-shore IP Transactions
Local IP Transactions
o Exclusive Licences & Assignment require
o Licences - no approval required
NIPMO approval
o Assignment - NIPMO approval
o No capacity in RSA & Benefits to RSA
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Andrew Bailey, UCT (2010) http://www.rcips.uct.ac.za/ip/pfbill/

7. Insights Gained
Some key concerns
1. The possibility of a chilling effect on :
• scholarly publishing with respect to potentially patentable inventions
• beneficial sharing of research findings between researchers at publicly-funded
research (PFR) institutions and other institutions
• participation of PFR institutions in international research consortia due to the
restrictions on off-shore IP transactions
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8. Concerns cont’d
• 2. The possible loss of private funding, including from local SMEs, due to the
unaffordability of full cost model or an aversion to the IP protection imperatives of
the Act
• 3. Uncertainty about the exercise of state walk-in rights
• 4. Delays and costs created by regulatory processes
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9. Experiences to date
• This is new terrain and there is limited experience on how to operate optimally under
the new regulatory regime
• Certain statutory provisions are unclear
• Careful forward planning may minimise any negative impact scholarly publishing
• Regulatory procedures delay the negotiation, conclusion and implementation of
research contracts and may hinder socialisation of research
• There has been a small, but significant, loss of industry contract research
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10. Open Access Publishing and
Socialisation of research
A. Positive external balancing policy levers
• OER Development support initiative by the Academy of Science of
South Africa (ASSAf) and the departments of Science &Technology
and Higher Education & Training
• Scielo South Africa
• Green Paper for Post-School Education and Training in South Africa (2012)
B. Practices at case study institutions
• Signatory to Berlin Declaration
• OA repositories
• OER production
• Concerted effort to socialise research outputs
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11. Other models: UK
The government's decision
means that by 1 April 2013, all
papers from government-funded
research must be published in an
open access journal; if not, the
journal must make the paper
open access after 6 months.
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13. forums and opportunities
for advocacy
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15. 15

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17. an interdisciplinary research agenda?
• Is the Bayh- Dole model appropriate for developing countries?
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18. opportunities for future collaborative work
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19. ICTSD
Bhaven N. Sampat ‘The Bayh-Dole Model in Developing Countries: Reflections on the Indian Bill on
Publicly Funded Intellectual Property’ (2009)
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22. For further information
Open AIR Project http://.openair.org.za
Case study overview website http://bit.ly/UPY4dz
Case study intro video http://bit.ly/TlxaDj
caroline.ncube@uct.ac.za
• @caro_ncube
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