7. ResearchContractsandIPServices
IP Rights (IPRs)
• Trade marks
• Copyright
• Design rights
• Patents
• Trade secrets
• Know-how / confidential information
• Domain names
Statutory protection
possible
12. ResearchContractsandIPServices
Patents
• Philosophy of patents: public disclosure in exchange
for limited monopoly to recover development cost
and encourage innovation
• Sharing of knowledge is great but even greater if
there are funds to develop it further
– Limited philanthropic funding available
– Without a patent: unlikely that private company will spend
money to develop it further (investment not protected)
• Patents can be used:
– Defensively: prevent others from using it / enforce
monopoly (but this is expensive!)
– Offensively: for trade, to secure investment
13. ResearchContractsandIPServices
Patents
• Further advantages of patenting:
– Legal “package”: easier to contract with
– You hold the cards: can control the quality of the products
in the market; NB in medical applications
• Application per country – no ‘international patent’
exists
• Can only prosecute when patent granted: 2-6 years
• Monopoly granted for 20 years from international filing
date
21. ResearchContractsandIPServices
Invention Disclosure Form
• Inventors vs enablers
– Inventor: inventive contribution to solution of problem
– Enabler: no inventive contribution
• Inventor/enabler details
• Full technical description
• Extension / other applications
• Planned public disclosure: NB
• Funder details: may claim some rights
• Associated Agreements
• Potential commercialisation opportunities
Download from:
www.rcips.uct.ac.za/ip/overview
24. ResearchContractsandIPServices
What is not patentable in
SA
• A discovery
• A scientific theory
• A mathematical method
• Rule/method for performing a mental act
• Literary, dramatic, musical, artistic work
• Presentation of information
• Contrary to well established natural laws
• Something that promotes offensive/immoral behaviour or is contrary
to law
• Plant variety
• Biological process for the production of animals or plants, not being a
microbiological process or the product of such a process
• Method of treatment of the human or animal body by therapy, or
diagnosis practised on human or animal body
25. ResearchContractsandIPServices
Prior Art Search
• “Prior Art”: fancy name for any disclosure made
public before filing date of patent
• Scientific literature
• Google: general search
• Patent literature:
– UCT Prior Art Search Strategy
– Google Patents
– Patentscope
– Esp@cenet
– Access to TotalPatent database
26. ResearchContractsandIPServices
Know what you’re looking
for…
• You know how when you learn a new word you suddenly see it
everywhere….
• Know what you’re not looking for – i.e. what is not patentable
• Scout for patents in your own field
• Type in a few key words into Google Patents and read the
patent specifications. Look at the claims.
• See what can be patented and the types of things that
researchers in your field are patenting
• Contact RCIPS for guidance – RCIPS can get specialist advice
from patent attorneys, or arrange a seminar on a specialist
area
27. ResearchContractsandIPServices
Public Disclosure
What constitutes a public disclosure:
• Thesis submission
• Abstracts
• On-line blog
• Papers
• Presentations (except closed within UCT)
• Posters
• Visitors
Anywhere in the world!
Can destroy patentability through own disclosure
28. ResearchContractsandIPServices
Maintaining Confidentiality
• Can discuss freely within UCT – with no external
people present (until patent filed)
• Collaboration agreements typically have confidentiality
undertakings
• Non-disclosure (NDA) or Confidential Disclosure
(CDA) can be put in place before discussions
29. ResearchContractsandIPServices
UCT Patenting Process
• Screening for commercial potential & patentability
• Appoint patent attorney
• Assist preparation of priority patent specification
(provisional or UK non-provisional)
33. ResearchContractsandIPServices
Patent vs. Publish
• Both objectives can be achieved – just get the timing
right
• Patenting is another mode of publication
– patent databases
– citation
Write
paper
Disclose
to
RCIPS
File Publish
time
34. ResearchContractsandIPServices
Confidential Thesis
• Initiated by student on application
• Valid reasons:
– Commercial confidentiality
– Third-party confidential information
– Confidentiality required for access to materials
– Patent outstanding
• Invalid reasons:
– Considerations of privacy and security
– Third-party copyright issues
– Publication deriving from a thesis is pending
– High potential for litigation
– Pursuit of business opportunities may be jeopardised
35. ResearchContractsandIPServices
Confidential Thesis
• MSc – Dean and DVC to authorise
• PhD – Doctoral Degrees Board
• Typically 6 mths
• Maximum = 2 years
• Student starts by completing the form
• Work in conjunction with RCIPS
37. ResearchContractsandIPServices
Winner
Inventors Competition
Hendricks-Vicatos Maxillofacial Distractor
• Winner 2011 Popular Mechanics Inventors Competition
“Cutting Edge” category + Inventor of the Year
• Inventors
– Dr George Vicatos (Mechanical Engineering)
– Dr Rushdie Hendricks (external, but registered PhD at Health Sciences)
– James Boonzaier (Mechanical Engineering ex-student)
• Already successfully installed in first five patients!
BeforeBefore AfterAfter
38. ResearchContractsandIPServices
Recent Spin-Off Companies
• Antrum Biotech (Pty) Ltd
Prof Keertan Dheda
Health Sciences
• Elemental Numerics
Prof Arnaud Malan
Mechanical Engineering
• Seraptix CC
Prof Jonathan Blackburn
Health Sciences
• PST Sensors (Pty) Ltd
Profs Margit Harting & David Britton
Science
• Tuluntulu (Pty) Ltd
Profs Mqhele Dlodlo & Gerhard de Jager
Electrical Engineering
42. ResearchContractsandIPServices
IP Ownership
[not copyright]
• Below Full Cost: UCT owns all IP outputs (not all
copyright) with two exceptions:
– Student works entirely away from UCT at employer’s facility, funded by
employer.
• IP Agreement entered into with employer.
• Provision for separate agreement if inventive contribution made by
supervisor
– Undergraduate studies, except for final year engineering / other projects that
are linked to research activities of a postgrad student / employee of UCT
• May jointly own IP if IPR Act conditions are met
• Above Full Cost: Funder may own IP
43. ResearchContractsandIPServices
Tangible Research Property
• UCT promotes distribution
• Must inform RCIPS in advance (Materials Transfer Agreement)
• Must consider Biodiversity Act
• RCIPS can put a commercial agreement in place
– Income dealt with as per other revenue
– Unambiguous codes required
– Identify IP creators
44. ResearchContractsandIPServices
IP Ownership - Copyright
UCT holds copyright in:
• Banks of multiple choice test and examination questions
• Syllabuses and curricula
• Computer software to support academic or research administrative processes
or the general operational management of UCT
• UCT publications including content on the UCT websites
• Photographs and digital images taken by Employees for UCT media or
publicity or specifically commissioned by UCT
• Specifically commissioned works and course materials that fall outside the
scope of normal academic work
• Computer Software developed as part of a research project
unless assigned by research agreement to another party
45. ResearchContractsandIPServices
IP Ownership - Copyright
UCT automatically assigns to the author(s) the copyright, unless UCT has
assigned ownership to a third party in terms of a research contract, in:
• Scholarly and literary publications
• Paintings, sculptures, drawings, graphics and photographs produced as an art form
• Recordings of musical performances and musical compositions
• Course materials, with the provision that UCT retains a perpetual, royalty-free, non-
exclusive licence to use, copy and adapt such materials within UCT for the purposes
of teaching and or research
• Film
46. ResearchContractsandIPServices
Thesis Copyright
• Postgrad students own the copyright in their thesis
• NB – not the IP content that is discussed!
• Publishers
• Clash with exclusive rights.
– Rule GP8: student grants right to UCT to publish the thesis in whole or
in part in any format that it deems fit.
• Supervisor Permission
• 3rd-party copyright
47. ResearchContractsandIPServices
Open Source & Creative
Commons
• Open Source – default for teaching and research
– NIPMO approval may still be required
– RCIPS will make application (guidelines expected)
• Creative Commons – supported by UCT (promotion of sharing
of knowledge and the creation of Open Education Resources)
– Authors have control over their material
– Authors may apply to RCIPS to grant permission for material owned by
UCT
48. ResearchContractsandIPServices
Creative Commons
Licenses
Attribution (BY)
Non-Commercial
(NC)
No-Derivatives(ND) Share Alike (SA)
You must credit the
licensor of the work
You can only use the
work for non-
commercial purposes
You may not create
adaptations of the
work
You may create
adaptations of the
work, but these must
be under the same
licence as this work
6 Basic Creative Commons Licences
Attribution (BY)
Attribution – No Derivatives (BY-ND)
Attribution – Non-Commercial – No Derivatives (BY-NC-ND)
Attribution – Non-Commercial (BY-NC)
Attribution – Non-Commercial – Share Alike (BY-NC-SA)
Attribution – Share Alike (BY-SA)
http://sitecore.jisc.ac.uk/publications/briefingpapers/2009/bpc
reativecommons.aspx
49. ResearchContractsandIPServices
Public Domain
IP Creator or Funder desire release into public domain:
• Where UCT are supportive of this, RCIPS will seek approval
from NIPMO, where this is required in terms of the IPR Act
50. ResearchContractsandIPServices
Key Responsibilities:
Employees / Students / Visitors
• Records – lab notebooks, etc.
• Disclosure to RCIPS within 90d of making the invention
• Review work prior to public disclosure
• Ensure IP terms clear before sabbaticals
• Leave UCT – negotiate rights for continued access
• New employees – disclose background IP
51. ResearchContractsandIPServices
Student – Supervisor MoU
• Who funds the research (exclude bursaries)?
• In terms of the funding arrangement, has the IP been
assigned to the funder
– (i.e. either because the full cost model has been applied
to the project, or in terms of a research contract)? YES /
NO (delete the non applicable)
53. ResearchContractsandIPServices
IPR Publicly Financed R&D Act
• 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
– But if Full Cost, deemed subsidy exists
• IP owned by UCT unless Full Cost model applied
– Impacts relationship with funders in terms of IP ownership
• Obligation to commercialise
• Benefit share for IP creators stipulated
55. ResearchContractsandIPServices
Disclosure to
RCIPS on
Invention
Disclosure
Form
Assessment
by RCIPS
Report to NIPMO. Twice
Annually on Form IP7
[Reg 14(1)(a)]
Failure to disclose -
NIPMO takes IP [Act 14(5)]
Refer to
NIPMO
[Form IP1]
Protect
No societal / economic
benefit
More work
required
Return to IP Creator
(and Co-funder)
90d
30d
60d
30d
Return to UCT
Prior to Public Disclosure
Zone
56. ResearchContractsandIPServices
Inventor Responsibilities
• Screen your work ahead of any public disclosure for
protectable IP.
• Disclose invention to RCIPS as early as possible. IPR Act
requirement is 90 days
• Assist with preparing, reviewing and signing documents
relating to the exploitation of an invention
• Maintaining confidentiality until provisional application has
been filed
62. ResearchContractsandIPServices Funding in the South African Innovation Space –
UCT Perspective
Research Development Start-up Business
Growth
NRF
High Nett Worth Individuals/Consortia – “Angel Investors”
THRIP
UCT PreSeed Fund
UCT Evergreen Fund
SPII
Venture Capital
IDC Venture Capital
IDC
Private Equity
Banks
Stock
Exch.
TIA: Technology Development Fund
TIA: Industry Matching Fund
UCT TIA Seed Fund
64. ResearchContractsandIPServices
UCT TIA Seed Fund
• New in 2014
• Currently no limit to the number of proposals
submitted for funding by an institution
• Administered by the university – no Technology
Innovation Agency approvals process
• Designed to operate as a ‘gap fund’ to mature
university projects and fill the TIA pipeline
• Up to R500k avail. per project
65. ResearchContractsandIPServices
UCT Laboratory Notebook
• IP Best practice
• Good Laboratory Practice
• R20 per copy – [blocks of 10 ideally]
• Made affordable through generous
sponsorship
– Celtic Diagnostics
– Industrial Development Corporation (IDC)
– Lasec
– Merck
– National Research Foundation (NRF)
– Roche
– Spoor & Fisher
– Technology Innovation Agency (TIA)
– The Scientific Group
– United Scientific
– Von Seidels
– Whitehead Scientific
66. ResearchContractsandIPServices
UCT Laboratory Notebook
• How to keep a notebook –
Prof Jennifer Thomson
• Tips in footers – IP /
Contracts / Funding
• Info on Research Office,
Postgrad Funding Office,
RCIPS
• Ordering process – see
www.rcips.uct.ac.za
69. ResearchContractsandIPServices
Inventors Guide
• Preparation for filing a
provisional patent –
inventorship, info requirements
• The Stage Gate Process and
aims of Gate reviews
• UCT’s approach to
commercialisation
• Pre-Seed Funding
• Royalties and Rewards!
• Given to inventors at time of
invention disclosure
71. ResearchContractsandIPServices
Become IP Savvy
• Modular course in Vula
– IP Policy
– IPR Act
– Patenting & Invention Disclosure
– Screening your Research
– Copyright
• Pass the quiz, get certified Savvy