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Intellectual Property for Postgraduate Students

2014

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Contents

• RCIPS overview• Forms of IP and methods of protection• Patents• Confidential theses• Spin-out companies• UCT IP Policy

– Copyright ownership• IPR from Publicly Financed R&D Act• Student-Supervisor MoU• IP Savvy

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RCIPS Overview

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Research Contracts & IP Services

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Research Contracts & IP Services

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Forms of IP & Methods of Protection

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IP Rights (IPRs)

• Trade marks• Copyright• Design rights• Patents• Trade secrets• Know-how / confidential information• Domain names

Statutory protection possible

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IP Right Duration of Protection

Trade marks ™ ® Indefinite, 10 yr renewal

Copyright © Life of creator + 50 years

Design right Aesthetic – 15 yrsFunctional – 10 yrs

Patent 20 yrs

Trade Secret As long as it is secret! Not reverse engineered

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Multiple layers of protection

• Copyright• Patent(s)• Trade Mark• Design• Know how• Trade Secret

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Multiple layers of protection

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Multiple layers of protection

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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

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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

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US Patents granted, 1790–2008

Wikipedia http://en.wikipedia.org/wiki/Patent

First 10,000 patents (July 1790 to July

1836) were destroyed in a fire in December

1836

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Where to Patent?

ManufacturingMarkets

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Patenting Process

0 [mths] 30/31

Provisional Phase PCT Phase Regional / National Phase

2/7yrs

12

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Provisional Patent Application

Provisional patent

application

Priority Date

0 12

Provisional Phase

Review.

Draft Full Patent Application

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Provisional Patent Application

Provisional patent

application

Priority Date

0 12

Provisional Phase

Review.

Draft Full Patent Application

Can disclose publicly after

filing

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Patenting Costs

0 30/31

Provisional Phase PCT Phase Regional / National Phase

2/7yrs

12

R12k to 50k R85k R 0.5 to R1.0 million

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Patenting at UCT

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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

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Patentability

• Assessing patentability• Novel - objective• Useful • Inventive - subjective

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Patentability

FormulationsReactor

Process / Method

Reaction conditions

ProductsReactantsIntermediary

Catalyst

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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

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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

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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

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Public Disclosure

What constitutes a public disclosure:• Thesis submission• Abstracts• On-line blog• Papers• Presentations (except closed within UCT)• Posters• VisitorsAnywhere in the world!Can destroy patentability through own disclosure

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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

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UCT Patenting Process

• Screening for commercial potential & patentability• Appoint patent attorney • Assist preparation of priority patent specification

(provisional or UK non-provisional)

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Timeline

Disclosure Prior Art Drafting Filed

1-2 days 1 month1-2 days

Briefing

Meeting

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Timeline

Disclosure Prior Art Drafting Filed

1-2 days 1 month1-2 days

Briefing

Meeting

several days

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Patent vs. Publish

• Both objectives can be achieved – just get the timing right!

Write paper

File Publish

time

Discloseto

RCIPS

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Patent vs. Publish• Both objectives can be achieved – just get the timing

right

• Patenting is another mode of publication– patent databases– citation

Write paper

Discloseto

RCIPS

File Publish

time

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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

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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

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Funding Patent Applications

• UCT Research Council (URC) grant RCIPS an annual patent fund

• DST offer up to 50% rebate on UCT patent expenditure• Licensing agreements: recoup some of the patent expenses

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WinnerInventors 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

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Recent Spin-Off Companies

• Antrum Biotech (Pty) LtdProf Keertan DhedaHealth Sciences

• Elemental NumericsProf Arnaud MalanMechanical Engineering

• Seraptix CCProf Jonathan BlackburnHealth Sciences

• PST Sensors (Pty) LtdProfs Margit Harting & David BrittonScience

• Tuluntulu (Pty) LtdProfs Mqhele Dlodlo & Gerhard de JagerElectrical Engineering

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UCT IP Policy

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UCT IP Policy

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Applicability of the Policy

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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

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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

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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

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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

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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

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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

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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 LicencesAttribution (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/bpcreativecommons.aspx

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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

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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

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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)

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IPR Act

• Intellectual Property Rights from Publicly Financed R&D Act

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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

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IPR Act

• Scope

• Publicly funded

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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

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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

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Screening your IP• On notification of thesis submission, or before!

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Models for Commercialisation

• Spectrum of inventor involvement– Essentially none– Lead, with industry contacts– Participant in spin-off company

• Licensing• Outright sale• Equity• No double dipping allowed

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Commercialisation

Preferences:– Non-exclusive licensing– BBBEE / small enterprises– Optimal benefit to economy and quality of life of South

Africans– IP Creators who demonstrate to IPAC that they have the

capacity to operate and fund a spin-off business

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Apportionment of Income

Currently

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Sabbaticals

• Spending time in another institution’s lab? – Check other institution’s IP policy– Ensure necessary agreements are put in place prior to

departure

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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

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Pre-Seed Fund

ResearchFurther Innovation Funding / Commercialisation

Concept Funding

Explorer Funding

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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

• www.rcips.uct.ac.za/fundinnov/tiaseedfund/

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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

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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

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Inventor Mug

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Inventors Guide

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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

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www.rcips.uct.ac.za

• Bioprospecting• Entrepreneurship• Competitions• Seminars• Resources• Innovation / News

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Become IP Savvy

• Modular course in Vula– IP Policy– IPR Act– Patenting & Invention Disclosure– Screening your Research– Copyright

• Pass the quiz, get certified Savvy

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Contact RCIPS

• Philip Hoekstra / Dr Andrew BaileyPhilip.Hoekstra@uct.ac.zaAndrew.Bailey@uct.ac.za021 650 4015Research & Innovation 2 Rhodes AveMowbray

www.rcips.uct.ac.za