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Research Contracts and IP Services IPR Act Lite Version

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Research Contracts and IP Services This lite version of the IPR Act presentation provides an introduction to key information Comprehensive information, more detailed presentations and copies of the Act, its Regulations and various guidelines are available on the RCIPS website

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Research Contracts and IP Services Intellectual Property Rights from Publicly Financed R&D Act

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Research Contracts and IP Services Object of Act The object of this Act is to provide for intellectual property emanating from publicly financed research and development to be 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.

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Research Contracts and IP Services Ownership of IP Full CostOwnership A 70%, royalty-free license permitted BFunder 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 researchers expertise

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Research Contracts and IP Services NOTES a) If IP is claimed: all projects need to be costed at full cost. Template spreadsheets have been developed and can be downloaded from the RCIPS website. Your Faculty Finance Office can assist you with preparing full cost budgets b) Terms under which funds are provided need to be known and considered before the submission of a proposal c) Unless otherwise agreed in a faculty, all budgets must be signed off by an authorised faculty official (FO) and where applicable the PI and FO must confirm that project was budgeted at full cost Costing of Research Projects a)A Client/Funder can only claim rights to Intellectual Property if at least the full cost of the project is charged (this includes the cost of GOB-paid staff members working on a project) b)If a foreign entity wishes to own the rights to the IP, the above apply and in addition Reserve Bank approval is required

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Research Contracts and IP Services Government Rights Act Non-exclusive, royalty-free, non- transferable, worldwide licence for use by Government for health, security & emergency needs Non-commercialisation Walk-in rights : Failure to disclose assignment of IP to government Non-exclusive, royalty-free, non- transferable, worldwide licence for use by Government for health, security & emergency needs Non-commercialisation Walk-in rights : Failure to disclose assignment of IP to government Regulations " The intellectual properly under this transaction was created with support from the South African Government; ((under the contract number where applicable) awarded by (identify the Funding Agency or relevant government department) where applicable and is subject to the requirements of the South African Intellectual Properly Rights from Publicly Financed Research and Development Act, 2008 and its regulations (Act 51 of 2008"). The South African Government has certain rights to the intellectual property in terms of sections 11(1)(e), 11(2) and 14 of Act 51 of 2008". Consult with recipient to address non- commercialisation/non-performance Clear proclamation process of walk-in rights " The intellectual properly under this transaction was created with support from the South African Government; ((under the contract number where applicable) awarded by (identify the Funding Agency or relevant government department) where applicable and is subject to the requirements of the South African Intellectual Properly Rights from Publicly Financed Research and Development Act, 2008 and its regulations (Act 51 of 2008"). The South African Government has certain rights to the intellectual property in terms of sections 11(1)(e), 11(2) and 14 of Act 51 of 2008". Consult with recipient to address non- commercialisation/non-performance Clear proclamation process of walk-in rights

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Research Contracts and IP Services NIPMO Referral / Reporting Four main categories of referrals / reporting, which is undertaken by RCIPS: Intellectual Property that is unwanted by UCT, but is deemed to have commercial or societal benefit ad hoc Specific trigger Funder terms in contracts and certain IP transactions ad hoc Routine reporting on IP Management every 6 months Full Cost Model adopted by UCT every 2 years With referrals, the Act stipulates the period within which NIPMO must respond. If they do not, the permission is deemed granted.

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Research Contracts and IP Services Referral: Contract Terms Assignment (transfer of ownership) of IP Exclusive license agreements with foreign entities Upfront prior to contract signing: Where outputs will be released into the public domain e.g. research generating OpenSource software which will be release] 60 day approval period Licensing not at arms-length / below market value / royalty-free 60 day approval In collaborative research: Commercialisation on a royalty-free basis 30 day approval Research outputs should not be commercialised 30 day approval Note that licenses for research, development and education (i.e. non commercial use) have no restrictions.

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Research Contracts and IP Services Collaborations In terms of IP arising from collaborative research funded by one or more international funding / donor organisations, or research institutions, UCT must: Retain ownership of IP developed by UCT researchers and co-own jointly developed IP Use reasonable endeavors to ensure that commercialisation of the IP Provide access to collaborators in line with international norms / agreements IP can be licensed to collaborators and even assigned (although NIMPO approval required and all usual conditions relating to on-shore and off-shore transactions remain) If access granted for commercialisation by a collaborator on royalty-free basis, then NIMPO approval required at proposal stage Guidelines will be published by NIPMO in respect of multi-party collaborative R&D agreements

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Research Contracts and IP Services Obligation to Disclose to RCIPS For grants/research contracts falling within the Act, researchers are obliged to screen their work for protectable IP to ensure that intellectual property emanating from any publicly financed research and development is appropriately protected before results of such R&D are published or publicly disclosed by other means

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Research Contracts and IP Services Example 1 A funder funds a research project that is supervised and worked on by Prof. X. They pay for all materials and for the time of technical officers. Can the funder claim the IP? No: Prof. Xs time not covered no overheads were included project not costed at full cost Project falls within scope of Act as there is inherent government subsidisation, i.e. there does not need to be direct contribution of money by government Funder could access IP via exclusive license

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Research Contracts and IP Services Contact RCIPS Piet Barnard, Director Dr Andrew Bailey, IP Manager Piet.Barnard@uct.ac.zaPiet.Barnard@uct.ac.za Andrew.Bailey@uct.ac.zaAndrew.Bailey@uct.ac.za 021 650 3865 021 650 2425 Research Contracts & IP Services 2 Rhodes Ave Mowbray reception: 021 650 4015 email: ip@uct.ac.zaip@uct.ac.za www.rcips.uct.ac.za