Innovation Office Creating value for tomorrow PO Box 77000 Nelson Mandela University Port Elizabeth 6031 South Africa www.mandela.ac.za Innovation Office Main Building Floor 12 041 504 4309 innovation@mandela.ac.za innovation.mandela.ac.za Intellectual Property at the Nelson Mandela University: A Brief Introduction
Meet the IO Team This guide is intended as a very short introduction to Intellectual Property (IP) at the Nelson Mandela University, specifically looking at important legislation governing most of the University s IP, key provisions of the University s IP policy and information on patents and the patenting process. IP includes registrable IP such as patents, designs, trademarks and plant breeder s rights. Each of these forms of IP have a specific set of requirements (novelty being of the greatest importance) which must be satisfied in order for the owner s rights to be legally protected. There are also non-registrable forms of IP such as copyright, know-how and trade secrets. Ms Leoné Nowell Acting Director Both registrable and non-registrable forms of IP are managed by the University. Ms Naazlene Patel Innovation Manager Ms Elsa van Wyk Administrative Assistant Innovation Office Creating value for tomorrow For further information and enquiries, please contact the Innovation Office Innovation@mandela.ac.za (041) 504 4903
NOTES The IPR Act came into effect on 2 August 2010 and significantly changed the way that IP is managed at publicly financed institutions such as the Nelson Mandela University. The key issue is that publicly financed IP now belongs to the recipient of the public funds i.e. the publicly financed institution. As most research done at the Nelson Mandela University is fully or partially publicly financed, the IP thus belongs to the Nelson Mandela University. The Intellectual Property Rights Act (Intellectual Property Rights from Publicly Financed Research and Development The Nelson Mandela University has obligations under the IPR Act These include establishing a technology transfer office, and developing and implementing policies for the disclosure, identification, protection, development, management and commercialisation of IP, including benefitsharing arrangements. The Nelson Mandela University established its Technology Transfer Office, the Innovation Office (IO) in 2007, and has developed and implemented an IP policy. IO is responsible for managing, protecting and commercialising the University s IP. Act, Act 51 of 2008) The object of the IPR Act is to make provision that intellectual property emanating from publicly financed research and development is identified, protected, utilised and commercialised for the benefit of the people of the Republic, whether it be for a social, economic, military or any other benefit. Researchers have obligations under the IPR Act The IPR Act places an obligation on researchers at publicly financed universities to disclose any inventions to their Technology Transfer Office prior to public disclosure of their research. Public disclosure includes making available to the public through publications, written or oral description, by use or any other way that would destroy the opportunity to apply for patent protection. Conventional academic publications constitute public disclosure as well as abstracts, master's theses, doctoral dissertations, presentations and posters. Page 1
If you are planning to present your research at a conference, publish a paper, or otherwise publicly disclose something which may meet the criteria for patentability (novelty, non-obvious inventive step and useful), contact IO prior to the public disclosure to learn more about protecting your patent rights. The diagrams provided show different patent filing strategies which the IO office employs, all of which provide a maximum of 20 years protection from the priority date (earliest filing date). Patent protection does not prevent publishing. It only requires that the publication needs to be timed so that it doesn't appear in a journal or on the web until it is protected. Publishing an invention allows for its exposure to the scientific community and the rest of the public at an early stage, but does not prevent others from using the information for commercial purposes. Patenting an invention, on the other hand, increases the chances of cutting-edge research discoveries being pursued and developed for the benefit of society. Researchers have benefits under the IPR Act The IPR Act ensures that researchers benefit from successful commercialisation of their IP and the Nelson Mandela University is obliged to have a benefit sharing model in its IP policy. Most countries in the world are signatory to the Patent Cooperation Treaty (PCT). If a patent application is filed at the PCT, it gives the applicant up to 30 months from the priority date to make a decision on which national phase territories to enter. Research funded by a private entity may still fall under the IPR Act If a private entity funds research, it only falls outside the IPR Act if it is funded on a full cost basis. Full cost at the Nelson Mandela University means direct costs (including academic and contract staff time, consumables, travel, etc.) plus 35% of direct costs as an indirect cost component. Even if research is funded at full cost and thus falls outside the IPR Act, the Nelson Mandela University may still claim ownership of the IP depending on background IP, the field and the funder. A private entity can co-own IP with the Nelson Mandela University under certain circumstances including if they partially fund it and contribute intellectually to the IP. Above is the typical process for national phase applications in examining territories. Of course, different territories have their respective laws and time frames in this regard. Page 2 Page 7
Patents are commonly considered to be static lifeless certificates. In order to really appreciate and understand the patenting process, they should be viewed as living. Patents are consistently changing: from a patent application, through prosecution to a granted enforceable right in a specific territory. Patents and the Patenting Process The patent system allows for a patent owner to have a 20-year monopoly on their product or process. This monopoly promotes and incentivises research and development as it allows for a fair period of financial reward, but ensures that the technology is open to the public. Having a granted patent is a negative right. This means that the inventor or patent owner has the right to exclude others from benefiting from the invention by selling, offering to sell, making or using it. Patent protection strategies There are several different strategies to use in patent protection. Depending on the potential markets, partnerships or licensing potential, one type of patent strategy may be favoured over another. The Nelson Mandela University has to seek government approval for certain commercial transactions The IPR Act obliges the Nelson Mandela University to seek approval from the National Intellectual Property Management Office (NIPMO) when concluding certain intellectual property transactions such as local or foreign IP assignments (sales) and foreign exclusive license deals. The Nelson Mandela University also has to ensure that the State has a royalty-free licence to use the IP for the health, security and emergency needs of South Africa. Before granting an exclusive licence to someone to use IP created, the Nelson Mandela University must ensure that the licensee is capable of developing the IP further where required and undertaking commercialisation. The IPR ACT can be found on IO s website at innovation.mandela.ac.za South Africa has a patent registration system and not a patent examination system This means that if a complete patent application meets the formal requirements (such as all the official forms and payment of fees) it will proceed automatically to acceptance and grant without being examined. An official certificate is issued for every granted patent by the South African Patent Office. Any disputes will be dealt with in court. Other territories such as the USA and Europe examine the patent application before acceptance and grant. In examining territories a process of patent prosecution occurs in order to determine novelty and inventiveness, and to define the scope of the claims. Page 6 Page 3
The Nelson Mandela University s IP policy The aim of the Nelson Mandela University s IP policy to encourage and reward research and development that leads to the creation of IP whilst fulfilling the main functions of the University as an institution of learning and research. The Nelson Mandela University s IP policy must comply with the IPR Act and must also provide sufficient guidance on management, protection and commercialisation of IP without being inflexible. The policy covers issues of ownership and benefit-sharing. Ownership of IP vests in the Nelson Mandela University The University claims ownership of all IP developed during or consequent to research conducted by any staff member, student or contractor in the course and scope of their employment or studies. The University does not claim ownership of creative works unless these have been specifically commissioned by the University, and also may waive rights in respect of undergraduate projects. Teaching materials are not owned by the Nelson Mandela University Teaching material developed by a staff member or student as part of their duties towards the University is owned by the staff member or student. However, the Nelson Mandela University has a right to use the teaching materials under a royalty free license in perpetuity and may edit and change the material. Benefits will accrue to creators/inventors Any commercialisation income will be split between creators/inventors, the Faculty/Department/Entity where the research took place and the University s Central Finance Office. For the first one million Rand of revenues that the Nelson Mandela University receives from commercialisation, the creators/inventors receive 20% of the gross revenues; thereafter, the creators/inventors receive 30% of net revenues (i.e. after commercialisation and patent expenses). Page 4 For small projects, the creators/inventors receive more of the benefit Should the gross income be less than R50 000 and it appears unlikely that it will become greater than R50 000 at any point in time, the creators/inventors will get the full amount of the income less expenses, but with a minimum of 20% of gross income. The Nelson Mandela University commercialises IP through a wholly owned subsidiary Intellectual property transactions are regarded as commercial transactions and typically fall outside the core business of the university. The Nelson Mandela University has a wholly owned subsidiary called Innovolve (Pty) Ltd, through which the Nelson Mandela University s IP is commercialised. After reviewing the IP and determining that it is technically and scientifically sound, the Nelson Mandela University will assign or license the IP to Innovolve for commercialisation. Licensing from Innovolve (Pty) Ltd is generally via one of two routes: 1. The IP is licensed to an external organisation in return for payments and royalties. The license may be exclusive (i.e. only one license is granted) or non-exclusive and may be restricted to a particular geographic area; a particular market or manufacturing or processing sector. 2. The IP is licensed to a spin off company created by Innovolve. Innovolve will hold shares in the spin off company and may receive royalties on sales or dividends from its shareholding. The monetary benefit from commercialisation of the IP is passed on to the Nelson Mandela University and creators. The Nelson Mandela University s IP policy can be found at Innovation.mandela.ac.za Page 5