UNIVERSITY OF KWAZULU-NATAL

INTELLECTUAL PROPERTY POLICY

Custodian: DVC (Research)

Policy approved by: COUNCIL Date: 4 June 2010

Policy effective date: Date: 4 June 2010

Policy review structure & date: Date:

Implementation responsibility:

* Revision recommended by: Senate or Council committee UREC Date: 7 June 2010

* Revised policy approved by: COUNCIL Date: 17 September 2010

Implementation procedures approved by:2 Date:

* Delete if inapplicable

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Contents

SECTION A: POLICY STATEMENT........................................................................................4

PART 1: SUMMARY 13

PART 2. OWNERSHIP OF INTELLECTUAL PROPERTY...........................................15

2.1 HOW IP OWNERSHIP IS DETERMINED 15

2.1.1 FUNDAMENTAL OWNERSHIP RULES.............................................15

2.1.2 SIGNIFICANT USE OF UKZN-ADMINISTERED RESOURCES.......16

2.1.3 SPONSORED RESEARCH PROJECTS AND OTHER AGREEMENTS...............................................................................................17

2.1.4 WORKS FOR HIRE ...........................................................................18

2.1.5 COPYRIGHT IN INDEPENDENT WORKS, AND WAIVER OF UKZN RIGHTS...........................................................................................................19

2.1.6 TREATISES, DISSERTATIONS AND THESES................................20

2.2 TRADE AND SERVICE MARKS 21

2.3 SOFTWARE ACQUISITION 21

PART 3. PROTECTION OF INTELLECTUAL PROPERTY..........................................22

3.1 RESPONSIBILITY FOR ATTENDING TO PROTECTION 22

3.2 PATENTS: PROTECTION 22

“ABSOLUTE NOVELTY” REQUIREMENT...................................................22

DETERMINATION OF INVENTORSHIP........................................................22

3.3 COPYRIGHTS: ASSERTING AND REGISTERING 23

3.4 TRADE AND SERVICE MARKS: ASSERTING AND REGISTERING 24

3.5 DESIGN REGISTRATION 24

3.6 TANGIBLE RESEARCH PROPERTY 24

3.6.1 DISTRIBUTION FOR SCIENTIFIC RESEARCH...............................24

3.6.2 CONTROL OF TRP............................................................................24

3.6.3 TRP WITH POTENTIAL COMMERCIAL VALUE..............................25

PART 4. COMMERCIAL DEVELOPMENT...................................................................26

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4.1 INTRODUCTION 26

4.2 COMMERCIALIZATION - GENERAL 26

4.2.1 IP CREATOR ASSISTANCE.............................................................26

4.2.2 TECHNOLOGY OWNED BY UKZN IP CREATOR(S)......................26

4.2.3 TECHNOLOGY OWNED BY EXTERNAL IP CREATOR(S).............26

4.2.4 COMMITMENT OF FUTURE INVENTIONS AND OTHER IP...........27

4.2.5 CONSULTING CONTRACTS.............................................................27

4.3 COMMERCIALIZATION INCOME: BENEFIT DISTRIBUTION 27

4.3.1 CONSIDERATION GIVEN TO SOURCE OF FINANCING.................27

4.3.2 GENERAL PRINCIPLES.....................................................................27

4.3.3 SHARING OF COMMERCIALIZATION INCOME & BENEFITS........28

4.3.4 RECORDING AND REPORTING.......................................................30

4.4 CONFLICT OF INTEREST: IPTTO STAFF 30

PART 5. OBLIGATIONS ON FACULTIES, STUDENTS, STAFF, VISITORS AND OTHER AFFECTED PARTIES...............................................................................................31

5.1 GENERAL POLICY 31

5.2 INTELLECTUAL PROPERTY & PROPRIETARY INFORMATION AGREEMENTS (UKZN FORM IP2) 31

5.2.1 WHO MUST SIGN THESE AGREEMENTS? GENERAL RULE.......31

5.2.2 AFFECTED PARTIES EMBARKING ON RESEARCH WHICH WILL LEAD TO A TREATISE, DISSERTATION OR THESIS.................................31

5.2.3 VISITING ACADEMICS AND THOSE ON SABBATICAL.................31

5.2.4 FACULTY DEPARTMENTS TO OBTAIN SIGNATURE OF FORM...31

5.3 OBLIGATION TO REPORT POSSIBLE IP TO THE IPTTO 32

5.4 OBLIGATION TO SUPPLY COPIES OF TREATISES, DISSERTATIONS AND THESES TO UKZN LIBRARIES 32

5.5 UKZN “ITS” SYSTEM: OBLIGATION TO ENTER DATA 32

PART 6. DISPUTE RESOLUTION................................................................................33

6.1 ARBITRATION OF DISPUTES RELATING TO THIS IP POLICY 33

6.2 IP STEERING COMMITTEE TO CONSIDER CERTAIN MATTERS 33

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SECTION B: PROCEDURES AND GUIDELINES FOR IMPLEMENTATION.......................34

DISCLOSURE OF INTELLECTUAL PROPERTY..........................................34

PATENTS........................................................................................................34

COPYRIGHT...................................................................................................35

TRADE MARKS..............................................................................................38

REGISTERED DESIGNS................................................................................38

TANGIBLE RESEARCH PROPERTY (“TRP”)..............................................38

INCOME DISTRIBUTION PROCEDURE.......................................................39

STRUCTURES ASSOCIATED WITH INTELLECTUAL PROPERTY & INNOVATION..................................................................................................40

APPENDIX A: TYPES OF INTELLECTUAL PROPERTY RIGHTS......................................42

PATENTS AND PATENT RIGHTS.................................................................42

COPYRIGHT...................................................................................................43

TRADE MARKS..............................................................................................44

DESIGNS........................................................................................................45

PLANT BREEDERS’ RIGHTS........................................................................46

DOMAIN NAMES............................................................................................47

TANGIBLE RESEARCH PROPERTY (“TRP”)..............................................47

TRADE SECRETS, CONFIDENTIAL INFORMATION & KNOW HOW.........48

APPENDIX B: FORMS...........................................................................................................49

FORM IP1: UKZN INTELLECTUAL PROPERTY DISCLOSURE FORM.....50

FORM IP2: INTELLECTUAL PROPERTY (“IP”) AGREEMENT...................56

FORM IP3: MATERIAL TRANSFER AGREEMENT (TO NOT-FOR-PROFIT INSTITUTIONS)..............................................................................................59

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SECTION A: POLICY STATEMENT

1. Purpose statement

This Policy establishes principles and procedures according to which the University shall determine ownership of Intellectual Property associated with the University, shall protect and administer said Intellectual Property, and shall distribute benefits deriving from said Intellectual Property.

2. Introduction and background

UKZN’s primary function is as a repository of knowledge, which it generates through research and disseminates through applied research and consulting, teaching, community service and archiving.

This knowledge is reflected, inter alia, in Intellectual Property (“IP”) generated at UKZN in such forms as copyrights, patents, trade marks, designs, trade secrets and know-how. It is essential for UKZN to ensure that this IP is identified and properly managed for the mutual benefit of the University community, the creator thereof, and society in general.

It is also incumbent upon a University to commercialise its IP where appropriate rather than to leave it lying idle. This responsibility derives from the University’s core function to disseminate knowledge.

In identifying and managing such IP, UKZN will seek to hold ownership thereof where this is mandated or permitted by law, or where this is the most appropriate means to manage such Intellectual Property, but it should be recognised and acknowledged that it is not the intention of UKZN to deny IP Creators ownership of their creations without appropriate recognition, and where applicable, the right to share in any proceeds generated by the exploitation of such IP.

In carrying out its function as a repository of knowledge, UKZN’s primary focus is scholarship and ‘good research’ and not the pursuit of commercialisation, which must be regarded as ancillary to, and supportive of scholarship and good research. To the extent that scholarship and commercialisation are in conflict, scholarship must prevail. UKZN also recognises that the wealth contained in Intellectual Property is not only measurable in monetary terms, and accordingly any activity that contributes to the pool of knowledge at UKZN must be regarded as part of the Intellectual Property ‘wealth’ of the University, irrespective of its immediate or long term commercial value.

UKZN encourages staff to attract research funding from a variety of sources outside the institution. In some cases such research gives rise to patentable products, and the way in which IP is dealt with becomes very important. In particular, there is a need to protect the interests of all parties involved, i.e. sponsors, UKZN, the researcher(s) and, if appropriate, the student(s). It is important for UKZN to provide a supporting and enabling mechanism (and in particular, legal advice), while protecting its interests. The income that UKZN may derive from royalties and patents may in the future make a valuable contribution to fostering research activity over a broader front. Of particular concern in such interactions with (commercial) sponsors is a possible Conflict of Interest between the sponsors’ aims and those of an objective academic study.

Policies and processes are presented here for dealing with IP, patents and business development. Such policies and processes must be fair to UKZN, staff and students, as well

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as to sponsors, and should provide support and enabling mechanisms, including legal advice, to the staff. At the same time, cognisance needs to be taken of the potential value to UKZN (and its broader research activities) of funds derivable from such Intellectual Property.

The prompt and open dissemination of the results of UKZN research and the free exchange of information among scholars are essential to the fulfilment of UKZN's obligations as an institution committed to excellence in teaching and research. Matters of ownership, distribution, and commercial development, nonetheless, arise in the context of technology transfer, which is an important aspect of UKZN's commitment to community engagement. Technology transfer is, however, subordinate to teaching and research; and the dissemination of information must, therefore, not be delayed beyond the minimal period necessary to define and protect the rights of the parties.

UKZN’s IP Policy must comply primarily with two documents:

The Intellectual Property Rights from Publicly Financed Research & Development Act No. 51 of 2008 (“IPR Act”), which was signed into law in the Republic of South Africa on 17 December 2008, and its associated Regulations; and

The UKZN Commercial Initiatives Policy, approved by the UKZN Council in June 2009.

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3. Definition of terms

For the purposes of this Policy, the terms listed below have the following meanings:

Academics

This term is used broadly and includes scholars, researchers, scientists, collaborators and Fellows, whether associated with UKZN, visiting, and/or on sabbatical.

Affected Parties

Refers to the natural and/or juristic persons to be affected by and against whom the Policy is applicable, which includes, without limitation, full-time permanent members of staff, full-time contract members of staff, support staff, students (whether registered, pending registration or as determined in terms of UKZN student rules), third parties who interact with UKZN (either as independent contractors, ‘employees’, visiting or ‘exchange’ students, visiting academics, scholars, researchers, scientists and fellows, private entities or organizations who fund research and development, clients or collaborators) and the UKZN as a corporate body along with all of its campuses, organs, colleges, faculties, schools, departments, offices and programmes. The term “Affected Party” shall have a corresponding meaning.

Commercial Initiatives Policy

In terms of its Commercial Initiatives Policy, UKZN typically allocates its institutional revenue share from Intellectual Property in a 40:40:20 split, by which is meant that the Inventors or IP Creators receive 40%, UKZN receives 40% and UKZN Innovation (Pty) Ltd receives 20%.

Of the latter 20% portion accruing to UKZN Innovation, one-quarter (i.e. 5% of the total proceeds due to UKZN) must, in turn, be transferred to the IPTTO by UKZN Innovation in respect of revenues resulting from projects in which the IPTTO was involved.

NB: The above ratios may be varied by agreement between the stakeholders and are specified primarily for guidance, as a starting point for negotiation and as a default, fall-back position in the event of failure to reach a different sharing ratio by agreement.

Commercialisation

The process by which any Intellectual Property is used or may be adapted to be used for any purpose, including commercially or to provide a benefit to society.

Commercialisation Costs

These are all out-of-pocket costs, fees and expenses that UKZN incurs and pays to independent third parties in connection with Commercialisation of Intellectual Property viz. filing, prosecution, development and maintenance of any statutory protection for Intellectual Property; defence, validation and enforcement of Intellectual Property rights; legal advice and services; auditing, recovery or collection of gross revenues; business research, business development, marketing, advertising, promotion or sales activities or services, reasonable travel, subsistence and administrative expenses.

Conflict of Interest

A Conflict of Interest occurs when there is a divergence between the private interests of an Affected Party and their professional obligation to UKZN, such that an independent observer might reasonably question whether the Affected Party’s professional actions or decisions are

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determined or influenced by considerations of personal gain, financial or otherwise. The term includes an action, omission or situation which may appear to compromise the objectivity of an Affected Party’s design, conduct or reporting of a project.

A Conflict of Interest will also exist when Affected Party, a direct family member or associated legal entity of such Affected Party (e.g. a company, closed corporation or trust) has an external economic interest that affects or provides an incentive to affect the Affected Party’s conduct and responsibilities at UKZN.

Conflicts of Interest or commitment may also be relevant to the waiving or licensing of UKZN’s IP Rights. Any of the following factors may signify a Conflict of Interest which will be taken into account prior to waiving or licensing such rights to IP Creators:

an adverse impact on UKZN's educational responsibility to its students; an undue influence on the employment commitment of the IP Creator to UKZN in

terms of time and/or direction of effort; a detrimental effect on UKZN's obligation to serve the needs of the general public;

and potential Conflict of Interest as defined in any of UKZN's Policies and Procedures.

Economic Interest

A staff member who has a shareholding, a management position or board membership or any other fiduciary relationship with an organisation other than UKZN has an economic interest in that organisation.

Full Cost of Research and Development

The full cost of research means the full cost of undertaking research and development as determined in accordance with international financial reporting standards, and includes all applicable direct and indirect cost as may be prescribed in terms of the Intellectual Property Rights from Publicly Financed Research and Development Act, No. 51 of 2008 (“the IPR Act”). The Regulations to the IPR Act require UKZN to establish a mechanism for determining whether “full cost” has been paid, and to report this to the Department of Science and Technology. Enquiries regarding UKZN’s policy on “full cost” determination may be directed to the IPTTO.

Unless the full cost of research is paid by a third party, it is assumed that the research undertaken at UKZN is at least partially publicly financed.

Intellectual Property (“IP”)

Intellectual Property means any creation of the mind that is capable of being protected by law from use by any other person, whether in terms of South African law or foreign Intellectual Property law, including any rights in such creation, and the term encompasses the following (whether registrable or non-registrable): Inventions, expertise, trade & service marks, business names, goodwill and the style of presentation of goods or services, trade secrets, copyrightable works, drawings, designs and plant breeds and varieties. Such works come about through the mental efforts, insight, imagination, expertise and creativity of humans.

For the purposes of this policy, the term “Intellectual Property” shall also include Tangible Research Property.

Intellectual Property and Technology Transfer Office (“IPTTO”)

This office was established as UKZN’s “office of technology transfer” in compliance with Section 6 of the IPR Act, 2008 and as its “Intellectual Property Management Office” in compliance with Clause 6 of UKZN’s Commercial Initiatives Policy. The office has

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responsibility for undertaking the obligations of UKZN in terms of the IPR Act, including, but not limited to, identifying, protecting and managing UKZN’s Intellectual Property and taking care of the interests of the IP Creators associated with the IP. The office also collaborates with UKZN Innovation for purposes of commercializing and licensing UKZN’s IP.

Intellectual Property Creator (“IP Creator”)

An IP Creator means the person or persons involved in the conception of Intellectual Property. The definition is broad and encompasses persons who have invented or created a registrable or non-registrable piece of Intellectual Property. It includes Inventors, designers, authors and copyright creators, and all other persons identifiable as creators for purposes of obtaining statutory protection and enforcement of Intellectual Property rights, where applicable.

Intellectual Property Rights (“IPR”)

This term refers to to rights in and to Intellectual Property. Such rights include, but are not limited to, rights of ownership of registered and unregistered IP, and rights to file applications for registration of IP. Examples of IPRs are: granted patents, registered designs, trade marks (whether registered or otherwise), copyright, trade secret rights, database rights, and rights to claim something as confidential information, including in foreign jurisdictions,

Invention

A patentable Invention is any product, process, method, appliance, apparatus, system or composition which is new and involves an inventive step, and which is capable of being used or applied in trade or industry or agriculture. For purposes of this document, the term “Invention” can refer to Intellectual Property of the above type which has not yet been patented but has acquired protection as confidential knowledge or information.

A discovery is not an Invention. In terms of the Patents Act, there are various other such exclusions to patentability. Such excluded matter may in certain cases be protected under other legislation, such as that relating to copyright or designs. See “Appendix B: Types of Intellectual Property Rights” for further information on patents, the excluded subject matter, and other forms of IP protection.

Inventor

An Inventor of a patentable Invention is an Affected Party whose name appears as an Inventor in the legal documentation associated with the patentable Invention. A person is not eligible to list himself or herself as an Inventor unless he or she contributed significantly to the intellectual development of the Invention. The yardstick for patents in the United States (where patents for most of UKZN’s important Inventions are sought) is that the Inventor must have made an “independent, original and conceptual contribution” to the Invention as defined in at least one of the patent claims (the claims are an important part of a patent application and contain the legal, written definitions of the Invention).

The status of Inventor may not be conferred merely as a reward for hard work, friendship or even outstanding science. This means that colleagues, students, research assistants, technicians, machinists, or those who supervise them, even though they may gather essential data or construct a practical embodiment of the Invention, are not Inventors unless they have made an inventive contribution.

However, where two or more persons have in fact contributed jointly to an Invention, all such Inventors must be listed in the patent application, failing which such application may be invalidated.

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Where an Invention or IP creation is not registrable, the IP Creators must agree on the contributors to the Intellectual Property for purposes of benefit sharing and control.

IPR Act, 2008

This is the Intellectual Property Rights from Publicly Financed Research and Development Act, No. 51 of 2008. The Act provides that Universities and other publicly financed institutions are vested with ownership of Intellectual Property (“IP”) that has emanated from publicly financed research and development, subject to certain obligations concerning benefit sharing with the IP Creators, exploitation in the public interest, national-level approval of any assignment of ownership, preferences for non-exclusive licensing, preference for Broad-Based Black Economic Empowerment (BBBEE), and Government march-in rights. In a nutshell, ownership of affected IP (other than copyrighted works associated with "conventional academic work") shall be owned by UKZN by operation of law.  However, provision is made to share benefits deriving from such IP with the relevant Inventors or IP Creators.  For example, the Act provides that Inventors are entitled to at least 20% of the first R 1 million of revenue accruing to an institution from the IP.

ITS System

This is the Integrated Tertiary System (“ITS”) at UKZN, administered by Management Information, UKZN.

Publicly Financed Research and Development

The term “Publicly Financed Research and Development” means research and development undertaken using any funds allocated by a funding agency but excludes funds allocated for scholarships and bursaries. A “funding agency” means the State or an organ of state or a state agency that funds research and development. These definitions are in accordance with the IPR Act, 2008 and any amendments or Regulations thereto.

Further definition of the terms is provided by the Regulations to the IPR Act, 2008.

For purposes of this Policy the term “publicly financed research and development” includes, but is not limited to, all research and development other than that in respect of which the Full Cost (calculated in accordance with the relevant University policy) has been contributed by entities in the private sector. For the avoidance of doubt the following are not entities in the private sector: the State, an organ of State, a State agency or component of the State established for the purposes of funding research and development (such as the Innovation Fund, the Intellectual Property Fund and the NRF), and State-funded organizations and NGOs which receive public finances for redistribution to Institutions.

Software

Software means any computer program, either in executable form or as source code from which executable programs are compiled, operating systems and/or integrated development environments; and all procedures and documentation, in any format (arrangement, design, configuration, system or lay-out) pertaining thereto and any one or more modules of Software; all New Releases of Software; all Modifications and Enhancements to Software; and the relevant documentation applicable thereto.

The following terms shall have the meanings defined:

“Enhancements” means significant changes to the Software or any component of the Software resulting in the addition of a feature or capability not present in such Software prior to the introduction of the changes.

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“Modifications” means any changes, improvements or customisation of or to the Software or any component of the Software which may be required to adapt such Software to the changing and specific requirements of UKZN and or Affected Parties.

“New Release” means a release of the Software incorporating previously made upgrades and bug fixes to the Software.

Software includes all documents (in any format) created during the development, maintenance and updating of developed software or any part thereof.

Tangible Research Property (“TRP”)

The term refers to those research results which are in a tangible form as distinct from intangible (or intellectual) property. Such property is often licensed for commercial purposes or distributed solely for research purposes in terms of a memorandum of understanding, materials transfer agreement or a formal licence.

Examples of tangible research property include integrated circuit chips, computer software, biological organisms and material, engineering prototypes, engineering drawings, and other property which can be physically distributed. Although tangible research property may often have intangible property rights associated with it, such as biological organisms which may be patented or computer software which may be either patented or copyrighted, where appropriate, tangible research property may be distributed without securing Intellectual Property protection by using some form of contractual agreement.

Technology

The term "Technology" is used broadly in this document to include technical innovations, Inventions, and discoveries, as well as writings and other information in various forms, including computer software.

Technology in tangible form. In some instances, the distribution and Commercialisation of Technology may be accomplished by the transfer (i.e. assignment) of, or licensing of, the Intellectual Property rights such as patents and copyrights. In other instances, distribution and Commercialisation of Technology may be aided by, or depend upon access to a physical or tangible embodiment of the Technology, as for example in the case of chemical compounds, genetic material, biological organisms & isolates, biosamples, plant varieties or computer software. Such material is often the subject of so-called Materials Transfer Agreements (“MTA’s”). The IP Policy of UKZN defines not only the ownership, distribution, and Commercialisation rights associated with Technology in the form of Intellectual Property, but also sets out policies and procedures which govern the use and distribution of the Technology in its tangible forms. Refer to the explanation of Tangible Research Property in “Appendix B: Types of Intellectual Property Rights” for further information.

UKZNThe University of KwaZulu-Natal.

UKZN InnovationRefers to UKZN Innovation (Pty) Ltd, a private company duly incorporated in accordance with the company laws of South Africa, having registration number 2002/018993/07.

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4. Objectives of the Policy

This policy aims to bring the University’s practices relating to Intellectual Property (“IP”) into compliance with the IPR Act, 2008 and UKZN’s Commercial Initiatives Policy, to provide an Intellectual Property and Technology Transfer Office, and to provide systems for identification, protection and commercialisation of UKZN’s IP. The policy aims to explain how ownership of IP developed by, through or at UKZN, or using UKZN resources, will be determined, and how income generated from commercialisation of UKZN IP will be distributed. It also seeks to provide rules relating to conflict of interest and dispute resolution in respect of IP.

5. Scope of the Policy

This policy will apply equally to all Affected Parties (See Definition of terms, above).

The following subject matter will be covered by the policy: identification, protection, ownership, distribution, and commercial development of Intellectual Property and Technology developed by Affected Parties.

A more detailed description of the various forms and types of Intellectual Property is set out in Appendix A hereto.

This policy must be read in conjunction with UKZN’s Commercial Initiatives Policy.

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6. The Policy

PART 1: SUMMARY

Subject to exceptions contained in or provided for in this policy, UKZN will have all rights, title and/or interest in and to, and will hold all Intellectual Property as the rightful owner thereof where:

It is required or obliged to do so by any Legislation and any amendments or Regulations thereto (particularly in terms of the IPR Act, 2008, which provides, subject to definitions and exceptions, that “intellectual property emanating from publicly financed research and development shall be owned by the institution [i.e. UKZN]”);

It is entitled to do so by law;

It is entitled to do so in terms of UKZN’s Commercial Initiatives Policy, which provides that “ownership of any Intellectual Property created by and through UKZN, and UKZN Innovation, shall vest in UKZN, and UKZN Innovation and the IPTTO shall ensure that the necessary steps are taken to effect the vesting of such ownership in UKZN;” or

It has made a significant contribution to the creation of such Intellectual Property.

Save as where required by Legislation, or by agreement, the fact that UKZN holds ownership of Intellectual Property shall not exclude the IP Creator thereof from:

Being acknowledged as the IP Creator of such Intellectual Property; Making use of such Intellectual Property for the purposes of his or her own further

teaching and research; Being involved in any decisions relating to the further use and exploitation of such

Intellectual Property; and Sharing in any proceeds generated by the exploitation of such Intellectual Property,

as provided for by this policy;

PROVIDED that the exercise of such entitlements must be consistent with the activities of UKZN in relation to that Intellectual Property.

UKZN is committed to the development of IP generated by its activities. This development includes:

IP education on an ongoing basis as to the nature and value IP, and the practical aspects of the disclosure, management and Commercialisation thereof;

The management and administration of developed IP that falls within the scope of the policy;

Contractual and legal advice on IP matters; Assistance with the sourcing of other resources to further develop IP (research

and venture capital funding, funding for further research, patent protection, establishment of industrial partnerships); and

The development of a database listing IP and other facilities and research interests at UKZN, and the active promotion thereof, to promote and to attract both non-commercial and commercial interest, links and partnerships.

UKZN will maintain a resourced office to deal with the management and development of IP. This office will, for the time being, be known as the Intellectual Property &

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Technology Transfer Office (“IPTTO”). The office will be tasked, inter alia, with developing necessary operational requirements, including but not limited to:

The preparation of budgets and motivating for funds to implement the provisions of this policy;

Managing the identification, disclosure, and protection of UKZN’s Intellectual Property;

Collaborating with Researchers and UKZN Innovation (Pty) Ltd in the Commercialisation of UKZN’s IP; and

Ensuring compliance with other policies of UKZN, as well as UKZN’s conditions of service, and liaising with other staff and bodies within UKZN to achieve this.

UKZN records that it is desirous of pursuing Commercialisation of IP, and of carrying out research for commercial ends, to the extent that this is beneficial to all parties involved, and to the extent that this does not detract from, or excessively burden, the core activity of UKZN. This entails:

An acceptance of research for commercial ends and consulting as means of generating income;

Recognition that such research allows staff to expand their horizons and experience, which in turn benefits their teaching and research;

A recognition that this allows UKZN to attract and to retain staff that it would not otherwise be able to afford; and

Recognition that this permits UKZN to make some of its resources available to the broader community.

In the event of the successful Commercialisation of any of its IP, UKZN shall share the benefits and proceeds of such Commercialisation with the IP Creator(s) thereof such that:

the provisions of UKZN’s Commercial Initiatives Policy are complied with; and

the design of the sharing ratio is such that it acts as an incentive to Intellectual Property Creators and encourages further research and creativity.

In preparation for, and anticipation of, successful Commercialisation, UKZN shall put in place contractual agreements recording said sharing ratio for newly disclosed Intellectual Property at the earliest reasonable opportunity.

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PART 2. OWNERSHIP OF INTELLECTUAL PROPERTY

2.1 HOW IP OWNERSHIP IS DETERMINED

2.1.1 FUNDAMENTAL OWNERSHIP RULES

UKZN’s “Commercial Initiatives Policy” informs the present IP Policy. The Commercial Initiatives Policy provides as follows:

“…ownership of any intellectual property created by and through UKZN, and UKZN Innovation, shall vest in UKZN, and UKZN Innovation and the IPTTO shall ensure that the necessary steps are taken to effect the vesting of such ownership in UKZN.”1

The following principles are used to determine what Intellectual Property is created “by and through UKZN, and UKZN Innovation”:

IP OWNED BY UKZN

The vesting of rights in and to Intellectual Property (including Tangible Research Property) made or created by Affected Parties, is as follows:

1) Significant Use of UKZN Resources. Ownership of Intellectual Property developed with the significant use of funds and/or facilities administered by UKZN will vest in UKZN. The term “significant use” is discussed further in Clause 2.1.2 below.

2) UKZN-Funded Research. Ownership of Intellectual Property developed in the course of a UKZN-funded2 research project on behalf of a UKZN Faculty Department or Entity will vest in UKZN.

3) Externally Sponsored Research. Ownership of Intellectual Property developed in the course of, or pursuant to, an externally sponsored research or other agreement (i.e. a project funded through corporate, public or other external sponsors and administered by UKZN), will be determined according to the terms of such agreement and having regard to relevant legislation (see Clause 2.1.3 below).

4) Written Agreements with UKZN. Ownership of Intellectual Property, including copyright, created pursuant to a written agreement with UKZN providing for transfer of said Intellectual Property to UKZN, will vest in UKZN.

5) Works for Hire. Ownership of copyright in copyrightable works, including software, and ownership of the works themselves, will vest in UKZN when the works were created as works for hire (see Clause 2.1.4 below).

6) Treatises, Dissertations & Theses. The ownership of full copyright in all treatises, dissertations and theses relating to any degree conferred by UKZN (whether undergraduate or postgraduate) will vest in UKZN if any of the above Fundamental Ownership rules is met. In circumstances where they are not met, ownership of limited pre-publication copyright rights shall nevertheless vest in UKZN by virtue of the fact that UKZN has conferred said degree, subject to certain exceptions as set out in Clause 2.1.6 below.

IP OWNED BY IP CREATORS

IP Creators will own Intellectual Property and associated IPRs when none of the above situations applies (and provided the Intellectual Property and IPRs are not subject to a claim of ownership from any other party).1 UKZN Commercial Initiatives Policy2 “UKZN-funded” means “financed by funds originating from the UKZN Council”.

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Where Intellectual Property is not owned by an IP Creator, he or she may nevertheless be entitled to receive a share in the benefit of any successful Commercialisation of the Intellectual Property. Please refer to Clause 4.3 below: “COMMERCIALIZATION INCOME: BENEFIT DISTRIBUTION.”

2.1.2 SIGNIFICANT USE OF UKZN-ADMINISTERED RESOURCESWhen Intellectual Property (including Tangible Research Property) is developed by Affected Parties using significant UKZN funds and/or facilities, UKZN will own and remain vested with the Intellectual Property. If the IP is not subject to a sponsored research or other agreement giving a third party rights, the issue of whether or not significant use was made of UKZN funds and/or facilities will be reviewed by a committee comprising a designated representative of each of the following: the IPTTO, Legal Office, the Research Office, and Line Management following an application to the IPTTO.

The following may be taken into account in determining any contribution made by UKZN in the creation of the Intellectual Property:

Financial, intellectual, administrative and infrastructural contributions of UKZN (the latter including physical resources and access to the knowledge and research machine); and

Use of the name, reputation and goodwill of UKZN.

However, significant use of UKZN funds specifically excludes the payment of salary and operational costs from unrestricted accounts (non-Council accounts), except in those situations where the funds were paid specifically to support the development of certain materials, techniques, or services, as for example in a research entity.

Furthermore, significant use of UKZN facilities specifically excludes the use of an office, a library, personal desktop work stations and communication and storage servers.

Important note relating to Software and works modelled using Software: Important software-related Intellectual Property can be created using no hardware or equipment other than a desktop or laptop computer.  Thus, for purposes of Intellectual Property consisting of software or modelled by means of software, any computer and/or software that has been supplied or financed by UKZN is deemed to be a “significant UKZN facility”, and anything more than minimal time spent using such computer or software in the development of the Intellectual Property will be deemed to be significant use of UKZN-administered resources. To allow otherwise would be to countenance an inequitable discrepancy between a computer scientist's rights in IP ownership and those of, say, a biologist or chemist.

If IP is found, on balance, to have been created with “significant use” of UKZN-administered funds and facilities (and is therefore found to be owned by UKZN) then Affected Persons who may have contributed to the IP, even though they may have been working outside the course and scope of their employment with UKZN and did not make significant use of UKZN-administered funds or facilities for their contribution, may not claim co-ownership of the IP.

When IP is not subject to a sponsored research or other agreement (such as an equipment agreement), but has been developed using significant UKZN funds and/or facilities, the IPTTO may in its discretion and consistent with the public interest, license the IP Creator(s) exclusively or non-exclusively on a royalty basis. The IP Creator(s) must demonstrate technical and financial capability to commercialize the IP, and the IPTTO will have the right to terminate such licence if the IP Creator(s) has or have not achieved effective dissemination of the IP within a reasonable amount of time (generally fewer than 3 years). The licence is also subject to the IP Creator(s) waiving their rights to royalty sharing under this Policy.

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Where such a licence is issued, the IP Creator(s) may be required to assume the costs of filing, prosecution, registration, maintenance and Commercialisation of the IP.

2.1.3 SPONSORED RESEARCH PROJECTS AND OTHER AGREEMENTS

Publicly Financed (i.e. State-Funded) Research and Development Programmes

In accordance with Section 4(1) of the IPR Act, Intellectual Property emanating from publicly financed research and development shall be owned by UKZN. This is subject to benefit-sharing between UKZN and the IP Creator(s) and their heirs, as provided for in terms of Section 10 of the IPR Act. UKZN must also take effective steps to develop practical applications of the Intellectual Property and transfer resulting Technology in a manner that provides benefit to society, or to allow commercial use on reasonable terms by licensing and/or other means.

Ownership by UKZN will occur irrespective of the extent of the public financing, i.e whether partial or full cost funding. Thus, if a State-funded organisation is mandated to provide funding to Institutions such as UKZN, and contributes the full or partial cost of the research, ownership of the Intellectual Property will vest in UKZN (provided that such an interpretation is consistent with the IPR Act and Regulations).

IP owned by UKZN in terms of this Clause 2.1.3 may be exclusively licensed to a private entity or organisation only where such entity or organisation has the capacity to manage and commercialise the Intellectual Property in a manner that benefits the Republic of South Africa. Where there is a failure to commercialise the IP the National Intellectual Property Management Office (“NIPMO”), established in terms of Section 8(1) of the IPR Act, is legally authorised to step in (per Section 15(1) of the IPR Act, 2008).

In accordance with Section 15(2) of the IPR Act, IP owned by UKZN may become co-owned by private entities and/or organisations where such entities and/or organisations meet all of the following requirements, namely :

they contribute resources, which may include relevant background IP by the private entity and/or organisation;

there is joint Intellectual Property creatorship; appropriate arrangements are made for benefit sharing with the IP Creators at

UKZN; and UKZN and the private entity and/or organisation conclude an agreement for the

Commercialisation of the IP.

In view of the aforegoing, contracts associated with research which benefits from State financing as well as contributions from private entities or organisations must be carefully checked, if necessary with the assistance of the IPTTO, to ensure that they comply.

Privately Financed “Full Cost” Research ProgrammesOwnership of Intellectual Property developed as a consequence of a contract entered into between UKZN and an industrial and/or private sponsor contributing the Full Cost of the Research and Development is subject to the provisions contained within each specific contract.

Other Privately Financed Research Programmes (Co-operation with Private Entities or Organisations and Institutions)

Affected Parties should contact the IPTTO for information or assistance regarding interpretation of research contract terms. The terms of sponsored research contracts apply not only to Intellectual Property made by staff, but also to those made by students and visitors, whether or not paid by UKZN, who participate in performing research supported by

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such contracts. It is essential, therefore, that all individuals participating in the research be made aware of their obligation to assign rights to UKZN.

2.1.4 WORKS FOR HIRE 3

Employees A "work for hire," for the purposes of this policy, is a work as contemplated in terms of Section 2 of the Copyright Act 98 of 1978 (“the Copyright Act”), created in the course of the employee's employment with UKZN, the employer. Such works are the property of UKZN. It is the policy of UKZN that it shall own all works for hire.

Examples of works for hire made by employees. Examples of works for hire, i.e. works which fall in the course of an Affected Party’s employment, include but are not limited to: works produced for UKZN’s core and support functions; course files and all content of such course files, including lecturing notes, course notes, course practicals, and multimedia materials produced for a course; open access and distance learning materials; assessments; tests; examination questions; syllabuses; curricula; computer software generated by staff programmers to support an academic, research or administrative process; UKZN publications and photographs taken for UKZN media or publicity.

Examples of works outside the course of employment. Independent scholarly, literary, musical and artistic works and publications (see Clause 2.1.5 below).

Non-EmployeesUnder the Copyright Act, copyright in commissioned works of non-employees is owned by the author and not by the commissioning party unless there is a written agreement to the contrary; [there is an exception to this rule relating to commissioned photographs, films & recordings, etc. which are owned by the person doing the commissioning4]. All Affected Parties are cautioned to ensure that independent contractors agree in writing that ownership of the commissioned work is assigned to UKZN, except where special circumstances apply and it is mutually agreed that the author will retain ownership. Intellectual Property created by Affected Parties carrying out sponsored research is subject to the relevant research contract and contracts of such Affected Parties. It is essential that all Affected Parties carrying out sponsored research be made aware of their obligations to assign rights by way of a UKZN Intellectual Property & Proprietary Information Agreement (Form IP2).

2.1.5 COPYRIGHT IN INDEPENDENT WORKS, AND WAIVER OF UKZN RIGHTSUKZN does not claim ownership of copyright in books, articles and other scholarly publications, or in popular novels, poems, musical compositions, or other works of artistic imagination which are created by the personal effort of Affected Parties outside of the course of their employment (if any) with UKZN, and which do not make significant use of UKZN funds and/or facilities.

Furthermore, in those situations where copyright in a work resides in UKZN under the terms of this policy, UKZN will, upon the written request of the author and/or other Affected Party made to the IPTTO, and to the extent consistent with the intent of sponsor(s), if any, and the

3 Section 21(1)(d) of the South African Copyright Act 98 of 1978 provides as follows: “Where … a work is made in the course of the author's employment by another person under a contract of service or apprenticeship, that other person shall be the owner of any copyright subsisting in the work by virtue of section 3 or 4” [Certain exceptions omitted].4 Section 21(1)(c) of the South African Copyright Act 98 of 1978 provides as follows: “Where a person commissions the taking of a photograph, the painting or drawing of a portrait, the making of a gravure, the making of a cinematograph film or the making of a sound recording and pays or agrees to pay for it in money or money's worth, and the work is made in pursuance of that commission, such person shall … be the owner of any copyright subsisting therein.”

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relevant UKZN Faculty Department or Entity, transfer copyright in said work to said author or Affected Party, or licence or waive its rights to said copyright.

Use of UKZN-owned copyright works in publications. A transfer, assignment of waiver of UKZN’s copyright as contemplated in this Clause 2.1.5 may, for example, be given to an Affected Party who wishes to draw on copyrighted material developed by academics, students or other Affected Parties of UKZN or the former University of Natal or University of Durban Westville, in the authoring of textbooks, question books or other publications.

Special concession for artistic works made using significant UKZN facilities. Where the copyright in an artistic work vests in UKZN solely by virtue of the author or artist having made significant use of UKZN facilities in the creation of the work, this Policy shall automatically transfer the ownership of such copyright to the author or artist upon receipt by the IPTTO of an assertion of ownership made in writing by such author or artist. Such assertion must describe the work in sufficient detail to permit its identification. UKZN shall have no authority to refuse the transfer of rights to the author or artist when such an assertion is received, provided that the sole reason for the initial vesting of copyright in UKZN was the use of significant UKZN facilities.

2.1.6 TREATISES, DISSERTATIONS AND THESES

The ownership of full copyright in all treatises, dissertations and theses relating to any degree conferred by UKZN (whether undergraduate or postgraduate) will vest in UKZN if any of the Fundamental Ownership Rules of Clause 2.1.1 is met.

Pre-publication Copyright Rights vesting in UKZN In circumstances where the Fundamental Ownership Rules of Clause 2.1.1 are not met, ownership of limited pre-publication copyright rights shall nevertheless vest in UKZN by virtue of the fact that UKZN has conferred the Degree giving rise to the treatise, dissertation or thesis. In such circumstances, the Affected Party must grant to UKZN a perpetual, non-exclusive, royalty-free licence (i.e. permission) to digitize, reproduce, share, disseminate and/or publicly distribute copies of his/her treatise, dissertation or thesis for research and study purposes only. Such licence shall be understood to take effect immediately and automatically upon creation of the relevant work; however, UKZN shall be entitled, at its own expense, to request a written document recording the licence, and the Affected Party shall do all things necessary to give effect to such document.

In the event that the Affected Party at any time requires UKZN to grant a licence in respect of the pre-publication rights, to enable publication to take place, the Affected Party shall apply, in writing, to UKZN’s Copyright Office, which shall not unreasonably withhold such licence. In the event that an external party, for example, a journal, objects to being granted such licence (e.g. on the grounds of overlap of their publication rights with UKZN’s parallel pre-publication rights), the Copyright Office may decide, after consideration of a written application from the Affected Party, to assign all or part of the pre-publication rights to any third party, or to take any other reasonable and appropriate action in respect of the rights, while safeguarding UKZN’s interests and access to the relevant treatise, dissertation or thesis for research and study purposes.

Embargo. UKZN recognises the need for UKZN Faculties and other Affected Parties to embargo documents in certain circumstances so that publication is deferred (for example, to delay publication of IP for which statutory protection is being sought, or to keep research confidential). Any policies and rules for embargo created by an Affected Party must set enforceable limits on the duration of the embargo, and should describe mechanisms for requesting and terminating an embargo.

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Obligations relating to Treatises, Dissertations and Theses. Affected Parties (including students) have obligations connected with treatises, dissertations and theses, as follows:

When embarking on research which will lead to a treatise, dissertation or thesis, Affected Parties must sign a UKZN IP and Proprietary Information Agreement (Form IP2). Faculty Departments are responsible for ensuring that Form IP2 is signed by all students and other Affected Parties embarking on such research.

After completing a treatise, dissertation or thesis the Affected Party having produced it must submit copies to UKZN Libraries.

Further information on the above obligations is provided in PART 5 of this policy.

Underlying IP. Ownership of any software code, patentable subject matter and/or other underlying Intellectual Property contained in or referenced by a treatise, dissertation or thesis is determined in accordance with the Fundamental Ownership Rules (Clause 2.1.1 above).

2.2 TRADE AND SERVICE MARKS Trade and service marks relating to goods and services developed at or on behalf of UKZN will be owned by UKZN.

2.3 SOFTWARE ACQUISITION Regardless of whether Software (including databases) used at UKZN is owned by UKZN, Affected Parties, users or third parties, and whether it is protected by copyright and/or other laws, or subject to licence or other contractual arrangement, it is the policy of UKZN that Affected Parties and other users of the Software abide by any legal restrictions imposed by the owner of the Software. It is the responsibility of the owner of the protected Software to make the nature of the restrictions known to UKZN.

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PART 3. PROTECTION OF INTELLECTUAL PROPERTY

(IP & TECHNOLOGY EVALUATION, PROTECTION AND DISSEMINATION)

3.1 RESPONSIBILITY FOR ATTENDING TO PROTECTION The IPTTO and the UKZN Innovation Company share responsibility for facilitating the transfer of UKZN Technology for community use and benefit. The IPTTO evaluates, obtains proprietary protection for, and assists in the distribution of Technology for research purposes, as described in this PART 3. UKZN Innovation and the IPTTO assist in the commercial development of selected Technologies by identifying potential markets, negotiating licence agreements, forming spin-out companies, or in other appropriate ways, as described in PART 4.

3.2 PATENTS: PROTECTION Although patent protection is sometimes sought for various non-commercial reasons, such as professional status, UKZN will not, as a general rule, seek protection for Inventions which are not commercially attractive, even if an Invention is intellectually meritorious, unless otherwise requested by a sponsor such as the State, or a private entity and/or organisation which has funded research and development leading to the Invention. A commercially unattractive Invention is one unlikely to generate profit, or which offers an unattractive ratio of cost and risk to return. UKZN will normally seek patent protection for Inventions in order to pursue commercial licensing and to comply with the terms of sponsored research contracts. The procedures for obtaining patents for Inventions are described in PART 4: COMMERCIAL DEVELOPMENT. “ABSOLUTE NOVELTY” REQUIREMENTAny non-confidential publication (or even a verbal disclosure) which describes an Invention prior to the filing of a patent application will place that Invention into the public domain and will thereby preclude protection for that Invention in South Africa and most other countries. Therefore, if it is anticipated that a new Invention or other Intellectual Property will be disclosed in a publication and/or presentation (for example at a conference, Departmental Open Day, etc.) the conditions necessary for the protection of the Intellectual Property must be agreed to in consultation with the IPTTO and adhered to and/ or complied with prior to such publication and/or presentation.

It is not all research that needs to be reported to the IPTTO. For more information in this regard please see the Exception contained in Clause 5.3 of this Policy.

DETERMINATION OF INVENTORSHIPIn order to ensure the validity of UKZN’s patent applications, a person will not be recorded as an Inventor in a patent application unless he or she meets the following requirements:

A person must not be listed as an Inventor unless they contributed significantly to the intellectual development of the Invention; and

The status of Inventor or co-inventor may not be conferred merely as a reward for hard work, friendship or even outstanding science. This means that colleagues, students, research assistants, technicians, machinists and supervisors, even though they may gather essential data or construct a practical embodiment of the Invention, are not Inventors unless they have made an inventive contribution.

That having been said, where two or more persons have contributed jointly to a patentable Invention, all such Inventors must be listed in the patent application failing which such application may be invalidated.

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3.3 COPYRIGHTS: ASSERTING AND REGISTERING Copyright protection of books, articles, and publications is valuable in order to recognize authorship and protect the integrity of such works. Copyright protection is also essential in order for UKZN to license copyrightable materials to commercial book publishers and others and to comply with the terms of sponsored research agreements.

Copyright arises automatically in most cases, immediately a work is produced. Expressed formally, copyright in any work, except a broadcast or programme-carrying signal, subsists once such work has been written down, recorded, represented in digital data or signals or otherwise reduced to a material form.

The following notice must be applied to all literary, artistic, musical and other works capable of being protected by copyright:

“Copyright © [Year] University of KwaZulu-Natal.All rights reserved.

Copyright notice: No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without the prior written permission of the University of KwaZulu-Natal. The University of KwaZulu-Natal assumes no liability for errors or omissions.”

The date in the notice should be the year in which the work is first published. For the purposes of this policy, and in accordance with Section 1(5) of the Copyright Act 98 of 1978, a work shall be deemed to have been published if copies of such work have been issued to the public with the consent of UKZN (as owner of the copyright in the work), in sufficient quantities to reasonably meet the needs of the public, having regard to the nature of the work.

No notice other than the foregoing should be used for UKZN-owned works.

For additional protection in some countries (e.g. the United States), copyright may be registered at an official Copyright Office using official forms. Questions concerning copyright notices and registration should be directed to UKZN’s Copyright Office and/or the IPTTO.

Infringement of copyright by the University, or any individual staff member, could result in legal action against the University by the copyright holder and possible awards of damages. Copyright permission is required before materials are reproduced in the form of course-packs, single item handouts, study-manuals or course-readers, or distributed electronically or in the Libraries.

UKZN’s Copyright Office has been set up to ensure that the University is compliant with all copyright laws, rules and regulations. The Copyright Office is entrusted with responsibility for processing all copyright applications and for paying royalties as required by law.

3.4 TRADE AND SERVICE MARKS: ASSERTING AND REGISTERING A Trade Mark or service mark may be used to protect those names and symbols associated with certain UKZN activities, events, and Technology developments such as computer programs. Prior to registration of a Trade Mark, the designation "TM" appearing after the Trade Mark will give adequate notice of a claim of ownership. The designation "®" for a Trade Mark may only be used after formal registration of the mark at a national Trade Mark Office.

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The use of Trade Marks to protect UKZN-owned Technology or to designate UKZN as the origin of a product, event, activity, service, or the like, may be instituted only at the direction of the IPTTO. It is important to note that Trade Mark protection carries with it certain obligations on the part of the holder of the mark. Therefore, requests for use and registration of Trade Marks on behalf of UKZN must be referred to the IPTTO.

3.5 DESIGN REGISTRATION UKZN, as the owner of an aesthetic design which is new and original or a functional design which is new and not commonplace in the art in question, may register such design.

If an application for registration of a design has not been made within six months (two years in the case of integrated circuits and mask works) of the release date of the design, design protection may be lost and the work will enter the public domain. Articles in accordance with the registered design, and any packaging or advertising therefore, should be marked with the design registration number, e.g.:

"RSA REG’D DES. NO. F 2010/1234".

3.6 TANGIBLE RESEARCH PROPERTY Tangible Research Property (TRP) such as biological materials and computer software is frequently patented (if not more appropriately protected by copyright) and then licensed for commercial purposes. However, these and other forms of TRP, including those under commercial licence, generally are simultaneously distributed solely for research purposes either under simple letters of understanding, Materials Tranfer Agreements or more formal licences. The following clauses deal only with dissemination of TRP for research and other non-commercial purposes. Commercial licensing of TRP is covered in PART 4.

3.6.1 DISTRIBUTION FOR SCIENTIFIC RESEARCH In keeping with the traditions of academic science and its basic objectives, it is the policy of UKZN that results of scientific research are to be promptly and openly made available to others. Since the traditional modes of dissemination through scholarly exchange and publication are not fully effective for most TRP, it is UKZN policy that those research results which have tangible form should also be promptly and openly made available to other scientists for their non-commercial scientific research, unless such distribution is inappropriate due to factors such as safety, the need to more fully characterize or develop the TRP prior to distribution, or unless such distribution is incompatible with other obligations.

3.6.2 CONTROL OF TRPWhere TRP is developed in the course of research which is subject to the terms of a sponsored research or other agreement funded by a private entity and/or organisation, control over the TRP’s development, storage, distribution, and use is the responsibility of the principal investigator, who must consult with the IPTTO.

In other cases, significant use of UKZN funds and/or facilities will be presumed, so control over TRP rests jointly with line management and with the IPTTO. The responsibility for control includes determining if and when distribution of the TRP is to be made beyond the laboratory for scientific use by others in accordance with the terms of this policy.

3.6.3 TRP WITH POTENTIAL COMMERCIAL VALUE Scientific exchanges should not be inhibited due to potential commercial considerations. However, TRP may have potential commercial value as well as scientific value, and the principal investigator who may wish to make TRP available for scientific use in a manner which does not diminish its value or inhibit its commercial development should seek guidance from the IPTTO. The normal mechanism for Commercialisation of TRP is through licensing agreements as set forth in PART 4.

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PART 4. COMMERCIAL DEVELOPMENT

4.1 INTRODUCTION It has long been acknowledged that the primary functions of a university are research, teaching & learning and community engagement & service. It is in the context of community service that UKZN supports efforts directed toward bringing the fruits of UKZN research to the public for its use and benefit. In many cases, mere publication of research results will be sufficient to transfer UKZN research to the public. In other cases, it is necessary to encourage industry to invest its resources to develop products and processes for use by the public. This can be achieved by protection of the Intellectual Property and by industry engagement, such as the granting of licence rights to industry.

4.2 COMMERCIALIZATION - GENERAL The IPTTO, in collaboration with UKZN Innovation, will consider the Commercialisation of Technology by researching the market for the Technology, identifying third parties to commercialize it, entering into discussions with such third parties, negotiating appropriate agreements, monitoring progress, and distributing commercial income in accordance with this policy. Commercial income may take the form of cash royalties, a share holding in joint venture or start-up or spin-out companies, or other forms agreed by contract.

4.2.1 IP CREATOR ASSISTANCE With few exceptions, the support and cooperation of the IP Creator is critical to Commercialisation and licensing success.

4.2.2 TECHNOLOGY OWNED BY UKZN IP CREATOR(S)Affected Parties who wish to pursue the development of their independently-owned Technology through the IPTTO may offer such Technology for evaluation by submitting an IP Disclosure Form. The IPTTO and UKZN Innovation will evaluate the commercial potential and determine whether or not the Technology will be accepted for licensing by the IPTTO, under the usual benefit sharing policies. Affected Parties are equally free to choose some other mechanism for commercializing their independently-owned Technology, but prior to such commercialisation should make sure that they obtain the appropriate written approval to do so from the IPTTO, following confirmation that the Technology is not subject to a sponsored research or other agreement, does not constitute a work-for-hire, and does not result from significant use of UKZN funds or facilities. If any of these conditions apply, the IP Creator should request from the IPTTO an appropriate licence to the Intellectual Property or a waiver of UKZN's rights.

4.2.3 TECHNOLOGY OWNED BY EXTERNAL IP CREATOR(S)The IPTTO and UKZN Innovation do not actively pursue working with external IP Creators as part of UKZN’s business. However, work with such parties may be undertaken provided all of the following conditions are met:

IP Ownership must be shared with UKZN. The external party must agree to assign joint ownership of their IP in the Technology, if any, to the University.

Benefit Sharing. The external party must agree to UKZN’s policy of benefit sharing.

Capacity Building. The external project must hold the potential of employing UKZN resources to build capacity and skills. For example, a project may be attractive if it holds

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potential to create final year projects in a Faculty, or provides scope for a Master’s or PhD programme.

The IPTTO will make a decision on whether investment in the external Technology is justified and, if so, propose the project to UKZN’s IP Steering Committee. If the IP Steering Committee decides not to invest, UKZN Innovation will retain an option to decide whether to become involved with the external party (without the assistance of the IPTTO).

4.2.4 COMMITMENT OF FUTURE INVENTIONS AND OTHER IP While it may be beneficial to contribute so-called follow-up Inventions relating to a specific Invention to a licensee, it is the policy of UKZN not to commit future Inventions to licensees even where improvements to Technology are anticipated. Some very narrowly drawn exceptions may occasionally be appropriate, for example to handle subordinate patents and well-defined derivative works for licensed Software.

4.2.5 CONSULTING CONTRACTS The IPTTO will not negotiate consulting/service or other contracts for individual IP Creators as part of any Commercialisation arrangement.

4.3 COMMERCIALIZATION INCOME: BENEFIT DISTRIBUTION

4.3.1 CONSIDERATION GIVEN TO SOURCE OF FINANCINGThe distribution management of benefits arising from the Commercialisation of Intellectual Property needs to consider whether such benefits arose from IP developed through: Publicly financed research programmes; and/or UKZN-funded research programmes, or programmes funded by private entities and/or

organisations.

This is done in order to recognise the fact that not all IP developed at UKZN will necessarily result from publicly financed research and development programmes, and to allow a fair distribution of benefits in such cases.

Income arising from royalties, bonus payments, etc. from an external entity in industry following successful development of IP for that entity according to the conditions of a formal research contract, will be dealt with under “Other Income”.

4.3.2 GENERAL PRINCIPLESIP Creators at UKZN and their heirs are granted a specific right to a portion of the revenues that accrue to UKZN from their IP for as long as revenues are derived from such IP.

The benefits granted to one of more IP Creators in respect of a particular subject matter of IP will be shared in equal proportions between them unless otherwise agreed between the IP Creators and UKZN, or set by UKZN policy.

IP Creators (and other beneficiaries as agreed by such IP Creators) may: Take up such benefit in a private and personal capacity,

irrespective of the nature of the benefit, in which case such benefit is fully taxable; Transfer such benefit, irrespective of the nature of the benefit,

to a legal entity created and approved for such purpose; Transfer benefits available as cash to their personal research

accounts where such funds are subject to the rules governing the use of research account funds;

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Offer to sell or donate benefits in the form of equity in small, tightly controlled companies to UKZN. In the case of an offer to sell, UKZN will at its own discretion offer the IP Creator a fair, market related price if UKZN is willing and able to buy-out the equity. In no circumstance will UKZN act as holding company for equity on behalf of IP Creators.

Benefits accruing to a particular Faculty of UKZN will be managed as follows: Cash benefits will be paid into a purpose specific cost centre of

the Faculty and may be used for more research, other core (teaching and learning) functions, payment of operational costs and Human Resource costs. The management structure(s) of each Faculty shall be responsible for the management of Commercialisation Costs and funds. For record keeping purposes, the Faculty’s management structure(s) must submit to the IPTTO rules and guidelines approved by the Faculty Board for the utilization of such funds.

Benefits in the form of equity will be held in the name of the UKZN and their disposal will be jointly agreed between the Faculty’s management structures and the IPTTO. All cash benefits resulting from such disposal, less any direct costs associated with such disposal, will flow to the Faculty’s Commercialisation cost centre.

Benefits accruing to a self-funded entity of UKZN will be managed as follows: Cash benefits will be paid into a purpose specific cost centre of

the entity and may be used for core business functions, including payment of operational costs and Human Resource costs as per the entity’s annual Board-approved business and operations plan.

Benefits in the form of equity will be held in the name of the UKZN and their disposal will be jointly agreed between the entity’s management structure(s) and the IPTTO. All cash benefits resulting from such disposal, less any direct costs associated with such disposal, will flow to the entity’s Commercialisation cost centre.

A portion of the UKZN share of any revenue will be allocated to a Strategic Research Fund for the promotion and development of research and development.

4.3.3 SHARING OF COMMERCIALIZATION INCOME & BENEFITSUKZN’s Benefit Sharing policy was first set out in its Commercial Initiatives Policy and what follows is derived from that policy.According to Clause 7 of UKZN’s Commercial Initiatives Policy:

“the [IPTTO] of UKZN shall devise a fair and effective benefit sharing policy which will apply to the division of the proceeds of the exploitation of any Intellectual Property. Such benefit sharing may include the creator of the Intellectual Property, the creator’s School / Faculty, UKZN and UKZN Innovation.”

UKZN recognises that it will be necessary to determine the participants in the sharing of the benefits deriving from the Intellectual Property, and their ratio of such sharing, on a case by case basis. However, Clause 7 of UKZN’s Commercial Initiatives Policy provides that the basic formula to be applied (and which serves as the final formula where agreement cannot be reached) is a 40:40:20 split:

40% to UKZN

This amount may be further subdivided between UKZN’s central administration and the Faculty and/or School from which the participating academics are drawn. However, while the main fund budget of UKZN is in deficit, the majority of this 40% will go to the main fund. A

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small portion of the 40% share (to be agreed on in each case) must nevertheless go to said Faculty and/or School. This portion must increase as the deficit improves. When the main fund budget is not in deficit, a different allocation can be negotiated but the minimum contribution will be 20% to the main fund budget.

40% to University Participant(s) / IP Creator(s)

This share is awarded to the participating academic / IP Creator(s) or their ‘entity’ created for the purpose of the project giving rise to the profits. Where there are more than one academic / IP Creator(s) the 40% portion is divided in equal proportions between them unless the division has been varied previously by agreement or UKZN policy. Section 10(2) of the IPR Act, 2008 provides for a minimum allocation to IP Creators of 20% of the revenues accruing to [UKZN] for the first R 1 million of gross revenues, or such higher amount as the Minister of Science & Technology may prescribe. Thereafter, at least 30% of the nett revenues accruing to UKZN from such IP must be allocated to the IP Creator(s) Thus, in circumstances where the latter amounts exceed the 40% benefit-share allocated by this policy, the IP Creator(s) will be entitled to the higher amount and the proportions due to the remaining Parties will be adjusted accordingly.

20% to UKZN Innovation

One-quarter of this 20% share, i.e. 5% of the total benefit, is allocated to the IPTTO provided that the IPTTO has made a contribution to protection of the Intellectual Property and/or Commercialisation thereof. This provision is in accordance with Section 10(5) of the IPR Act, 2008, which requires UKZN to apportion part of its revenues for funding, among other things, the operations of its office of technology transfer and the statutory protection of its Intellectual Property.

NB: First Calls on Revenue

First Call 1: Benefit Share to IP Creators for First R 1 Million5 According to the Section 10(4) of the IPR Act the minimum benefits due to IP Creators and their heirs in terms of the Act (i.e. 20 per cent of the first R 1 million of gross revenues) must be a first call on the applicable revenue ahead of any institutional distribution.

First Call 2: IP Protection & Commercialisation CostsAccording to Clause 7 of UKZN’s Commercial Initiatives Policy, “the rights of third parties to any proceeds of the exploitation of any Intellectual Property, and the costs involved in the protection and exploitation of such Intellectual Property shall be taken into account before the benefit sharing” (emphasis added). Thus, the costs of patent protection (including maintenance) and Commercialisation shall be a first charge against any proceeds of any successful Commercialisation, and shall be paid to the Party or Parties having incurred such costs (whether or not such Party or Parties is/are named in any Commercialisation agreement), prior to the division of the proceeds of successful Commercialisation between the Parties. These provisions are subject to those of First Call 1 above.

4.3.4 RECORDING AND REPORTINGAny Faculty or other UKZN entity involved in Research and Development funded by UKZN or a private entity or organisation shall keep and maintain full and separate financial records as determined in accordance with international financial reporting standards and must supply the IPTTO with audited details for such projects upon request. Such audits, if requested, must be carried out internally by a designated member of UKZN’s internal audit section.

Failure to comply with the above obligations will result in the IP concerned being treated as if the research and development leading thereto had been funded fully from public finances.

5 Or such higher amount as the Minister of Science & Technology may prescribe.

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4.4 CONFLICT OF INTEREST: IPTTO STAFF To avoid the possibility of present or potential future Conflict of Interest, no individual staff member of the IPTTO is permitted to personally invest in non-public companies that have licensed Intellectual Property from UKZN. If a staff member is a partner in a venture fund, that staff member should not engage in licensing negotiations with any company in which that fund is invested, and those who are voting partners should not recommend UKZN companies to that fund. IPTTO staff members also have a special responsibility to ensure that their knowledge of an IPTTO licence to a public company is not disseminated in any way that could affect the company's stock price, and that the knowledge is not used for investment purposes by themselves, their families, friends or business associates.

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PART 5. OBLIGATIONS ON FACULTIES, STUDENTS, STAFF, VISITORS AND OTHER AFFECTED PARTIES

5.1 GENERAL POLICY It is the policy of UKZN that Affected Parties, through their employment by UKZN or by participating in a sponsored research project, or by using UKZN funds and/or facilities, etc. thereby accept the principles of ownership of Technology as stated under this policy. In furthering such undertaking, Affected Parties must sign UKZN Intellectual Property & Proprietary Information Agreements (Form IP2) in accordance with the following policy:

5.2 INTELLECTUAL PROPERTY & PROPRIETARY INFORMATION AGREEMENTS (UKZN FORM IP2)

5.2.1 WHO MUST SIGN THESE AGREEMENTS? GENERAL RULE. Affected Parties must sign Form IP2 if they receive support from sponsored research or UKZN Council-funded projects or otherwise may be in a position to make, conceive or reduce to practice Inventions or otherwise develop Technology (i) in connection with sponsored research or UKZN Council-funded projects, whether or not salary or other support is received from such projects, or (ii) through the use of significant UKZN funds and/or facilities.

5.2.2 AFFECTED PARTIES EMBARKING ON RESEARCH WHICH WILL LEAD TO A TREATISE, DISSERTATION OR THESIS

Affected Parties (including students) embarking on a research programme which will culminate in a treatise, dissertation or thesis must sign a UKZN Intellectual Property & Proprietary Information Agreement (Form IP.2) at the outset of their programme, i.e. before commencing their research. The relevant UKZN Faculty Department or Entity must arrange signature of such forms by the Affected Parties.

5.2.3 VISITING ACADEMICS AND THOSE ON SABBATICAL

When it is anticipated that IP may arise during the course of research and/or activity undertaken by a visiting Academic, or by an Academic on sabbatical, Form IP2 must be executed by the Academic and by any other Affected Parties involved in the Academic’s research and/or activity prior to the commencement of any work.

ExceptionIf a UKZN Faculty Department hosting a visiting Academic is satisfied, having regard to the nature of the Academic’s research area and the intended subject matter of their research, that there is no prospect of any IP resulting from the Academic’s research and/or activity, or that any IP so resulting shall be trivial and shall have no commercial value, potential or application, then said Department shall not be required to arrange signature of Form IP2 by the Academic: with the proviso that if at any time during the visiting Academic’s research and/or activity it becomes known to the Department that IP not falling within this Exception may be, or has been, created, this Exception shall have no further effect and the Department shall promptly arrange signature of Form IP2 by the Academic and all other Affected Parties involved in his or her research and/or activity.

5.2.4 FACULTY DEPARTMENTS TO OBTAIN SIGNATURE OF FORMEach UKZN Faculty Department or Entity is responsible for ensuring that UKZN Intellectual Property & Proprietary Information Agreements (Forms IP2) are signed by all Affected

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Parties (including visiting Academics and those on Sabbatical who are not saved by the above Exception), who may be, or are, involved with sponsored projects or who may have opportunities to use significant UKZN funds or facilities administered by that Department or Entity. All Intellectual Property & Proprietary Information Agreements should be signed in triplicate with one copy retained by the signatory, one copy retained in the Department/Entity files and one copy sent to the IPTTO.

Intellectual Property & Proprietary Information Agreement forms (Form IP2) may be obtained from the IPTTO, which can also answer any questions that may arise in connection with such Agreements.

5.3 OBLIGATION TO REPORT POSSIBLE IP TO THE IPTTOSection 5 of the IPR Act, 2008 requires UKZN to “ensure that personnel involved with … research and development make a disclosure to it within 90 days … of identification by such personnel of possible intellectual property and before the intellectual property is made public.”

ExceptionIn view of the large quantity and volumes of research outputs produced by UKZN, and taking into account practical considerations relating to staffing and deadlines, the IPTTO does not expect all new research to be reported to it. If an Affected Party ascertains, in consultation with their relevant UKZN Faculty Department and/or Entity, that there is no prospect of any IP resulting from a particular subject matter of research and/or activity carried out by said Affected Party, or that any IP so resulting is trivial and has no commercial value, potential or application, then said Affected Party, Department and/or Entity shall not be required to report said research and/or activity to the IPTTO: with the proviso that if at any time it becomes known to them that IP not falling within this Exception may be, or has been, created, this Exception shall have no further effect and the Affected Party, Department and/or Entity shall promptly report said research and/or activity to the IPTTO.

Reporting of artistic works eligible for copyright transfer back to authors/artistsIn terms of Clause 2.1.5 of this policy, the copyright in artistic works created using significant UKZN facilities will, in defined circumstances, automatically transfer from UKZN to the author or artist of the work. This automatic transfer only takes place after the author or artist has submitted, and the IPTTO has received, a written assertion of ownership of the copyright by the author or artist. Such an assertion must describe the work in sufficient detail to permit its identification. It is in the interests of authors and artists to notify the IPTTO of their artistic works made with significant UKZN facilities at their earliest convenience.

5.4 OBLIGATION TO SUPPLY COPIES OF TREATISES, DISSERTATIONS AND THESES TO UKZN LIBRARIES

Affected Parties must forward master copies and electronic copies of the treatise, dissertation or thesis to UKZN Libraries by the date, in the numbers and in the format for the time being stipulated by the Libraries in their policies.

5.5 UKZN “ITS” SYSTEM: OBLIGATION TO ENTER DATAFaculty Departments and Entities at UKZN are obliged to enter relevant information regarding research, researchers, students and supervisors into UKZN’s ITS system. This information is required in order to facilitate:

Development of a Higher Degrees Management System; and Functioning of the IPTTO.

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PART 6. DISPUTE RESOLUTION

6.1 ARBITRATION OF DISPUTES RELATING TO THIS IP POLICYThe Deputy Vice-Chancellor (Research) is responsible for appointing an independent committee as final arbiter of any disputed issues of interpretation relating to this document. In unusual circumstances, the Deputy Vice-Chancellor (Research) may request approval from UKZN’s Executive Committee to depart from normal policy and procedures set out in herein.

6.2 IP STEERING COMMITTEE TO CONSIDER CERTAIN MATTERS

The IP Steering Committee may make assessments and recommendations on issues connected with UKZN’s IP and this policy, including but not limited to:

Disputes regarding ownership of IP by UKZN. In the event that an Affected Party objects to ownership by UKZN of any IP (or work associated therewith) the Party may make a written application to the IPTTO which shall refer the matter to the IP Steering Committee for consideration. The IP Steering Committee shall hear all Parties, consider all relevant factors, including any IP involved, and shall make an assessment and recommendation regarding the ownership of the IP, to all interested parties.

Orphan works. Copyright of student (or other Affected Party) who cannot be traced. In the event that an Affected Party (for example, a student) cannot be traced and authorisation is required to include the whole or part of a treatise, dissertation or thesis owned by said Affected Party in a publication by any other person, and/or subsequently to reproduce it, such person may make written application to the IPTTO, which shall refer the matter to the IP Steering Committee for consideration. The written application must contain evidence of reasonable attempts to trace the absentee Affected Party and of provision made for remuneration of him or her. The IP Steering Committee shall consider all relevant factors, including the moral rights of the absentee Affected Party, and, in consultation with the Copyright Office, shall make an assessment and recommendation regarding the requested inclusion and/or subsequent publication of the treatise, dissertation or thesis, to all interested parties.

Embargo. In the event that an Affected Party is not satisfied with an embargo relating to a treatise, dissertation or thesis, they may make a written application to the IPTTO, which shall refer the matter to the IP Steering Committee for consideration. The IP Steering Committee shall hear all Parties, consider all relevant factors, including any IP involved, and shall, in consultation with UKZN Libraries and the Copyright Office, make an assessment and recommendation regarding the embargo, to all interested parties.

Disputes not resolved by the IP Steering Committee shall be referred for arbitration in terms of Clause 6.1 of this policy.

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SECTION B: PROCEDURES AND GUIDELINES FOR IMPLEMENTATION

The following persons and bodies are responsible for implementing and monitoring the implementation of this policy:

Director: Intellectual Property & Technology Transfer Office (IPTTO)

IP Steering Committee

All Faculty Boards

There is no conflict between this policy and current UKZN rules and/or policies. However, new and existing (where practical) staff contracts should be amended to give effect to the policy and to alert staff members to its implications. The Human Resources division has undertaken to implement such changes in due course once the policy has been approved.

The following Forms for use in connection with this policy are appended hereto:

Form IP1 UKZN Intellectual Property Disclosure Form

Form IP2 UKZN Intellectual Property & Proprietary Information Agreement

Form IP3 UKZN Materials Transfer Agreement

DISCLOSURE OF INTELLECTUAL PROPERTY The initial step in establishing contact with the IPTTO is usually the submission of a UKZN Intellectual Property Disclosure Form (Form IP1). The Disclosure Form can be obtained from the IPTTO or the IPTTO’s website (iptto.ukzn.ac.za). Once submitted, the Disclosure Form will initiate action by the IPTTO to determine whether UKZN wishes to adopt the Technology for purposes of investigating IP protection and marketing of the Technology. An IP Disclosure Form may, however, be accompanied by a letter requesting other action by UKZN, such as a waiver of UKZN's ownership rights in the Technology (where, for example, an Invention has not been developed with significant use of UKZN-administered resources).

Sponsored Projects (Contracts): The terms of sponsored research and other contracts normally create obligations with respect to the reporting of Inventions, technical data, and copyrightable works such as Software. In particular, Inventions and copyrightable works developed under sponsored research should be promptly reported by submitting an IP Disclosure Form to the IPTTO which will, in turn, oversee the discharging of UKZN's obligations to research sponsors.

Other Projects: Intellectual Property or Technology developed at UKZN either within the course of an Affected Party’s employment with UKZN, or with significant use of UKZN funds and/or facilities should also be submitted to the IPTTO using an IP Disclosure Form. Independently-owned Technology need not be disclosed to the IPTTO unless the owner of the Technology desires the IPTTO to commercialize the Technology. In such cases, the Technology should be submitted to the IPTTO using the IP Disclosure Form.

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PATENTS

Evaluation: Once an IP Disclosure Form disclosing an Invention has been submitted to the IPTTO, the office will begin the process of evaluating the Invention for patentability, commercial potential and obligations to sponsors. The first step will typically be a meeting with the Inventor. The IPTTO may also request that one of the Inventors participate in a literature and/or patent search of the prior art.

Thereafter, the Inventor(s) will usually be asked to make a 10 to 15 minute presentation to the IP Steering Committee at the Research Office. The presentation should be accompanied by a short (1 to 2 page) summary of the Invention, addressing the following: a brief description of the Invention, the novelty of the Invention, the value of the Invention to UKZN (potential market, etc.), the expected costs of developing and commercialising the Invention, and any associated risks to UKZN.

Sponsored Programmes: If the Invention arose from a sponsored research programme, the IPTTO may file for a patent and negotiate an appropriate Commercialisation model consistent with the terms of the contract with the sponsor. The IPTTO may be contacted for information about the specific patent terms of individual research contracts.

Waiver of UKZN Rights: When it has the right to do so, UKZN may, if requested by the Inventor, and at UKZN's discretion, "stand aside" in those situations where UKZN believes that such a course of action will enhance the transfer of Technology to the public, is consistent with UKZN's obligations to third parties, and does not involve a Conflict of Interest. By "standing aside", UKZN agrees not to exercise its contractual and/or legal rights to the Technology, clearing the way for the Inventor to seek ownership. Inventors may request that UKZN "stands aside" by submitting an appropriate letter.

In the case of publicly financed research and development programmes, if UKZN “stands aside” then the Invention concerned must be released to NIPMO, following which the Inventor may directly petition NIPMO for a release of the rights to himself or herself.

In the case of privately funded research programmes, the Inventor seeking ownership of their Invention should approach the owner of that Invention, as that ownership was determined by the relevant research contract.

Licensing of UKZN rights to Inventors:Affected Parties may also request a licence to commercially develop their UKZN-owned Inventions where such licensing would enhance the transfer of the Technology, is consistent with UKZN obligations to third parties, and does not involve a Conflict of Interest.

COPYRIGHT

Commercialisation:Copyright works owned by UKZN are normally licensed through the IPTTO, except where other arrangements are made in accordance with this policy. A copyright work not owned by UKZN also may be licensed through the IPTTO when submitted under an IP Disclosure Form to the IPTTO by its author and accepted for licensing by the IPTTO.

Computer Software: Computer Software in which UKZN acquires rights may be protected by copyright or patents (in certain countries) and made available by UKZN for commercial

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purposes through the IPTTO under various forms of patent or copyright licences. Authors and their departments/laboratories will share in royalties earned from licensing as further set forth in this policy. In those instances where the authors desire to distribute commercially licensed Software for research purposes or as TRP, such licensing must be coordinated with the IPTTO.

Video Works: This policy does not define Commercialisation and ownership rights to video works produced through the use of UKZN facilities or those which may be specifically commissioned by a department or laboratory within UKZN. Video works developed pursuant to an agreement will be subject to the terms of that agreement. The disposition of rights with respect to other UKZN-owned video works will be made on a case-by-case basis until such time as a policy has been defined.

Waiver of UKZN Rights: When it has the right to do so, UKZN may, if requested by an Author, and at UKZN's discretion, "stand aside" in those situations where UKZN believes that such a course of action will enhance the transfer of a copyright work to the public, is consistent with UKZN's obligations to third parties, and does not involve a Conflict of Interest. By "standing aside", UKZN agrees not to exercise its contractual and/or legal rights to the Technology, clearing the way for the Author to seek ownership. Authors may request that UKZN "stands aside" by submitting an appropriate letter.

In the case of publicly financed research and development programmes, if UKZN “stands aside” then copyright works do not need to be released to NIPMO (in this respect the situation for copyright works differs from that for Inventions and other types of Intellectual Property).

In the case of privately funded research programmes, the Author seeking ownership of their copyright work should approach the owner of the copyright, as that ownership was determined by the relevant research contract.

Licensing of UKZN rights to Inventors:Affected Parties may also request a licence to commercially develop their UKZN-owned copyright works where such licensing would enhance the transfer of the work, is consistent with UKZN obligations to third parties, and does not involve a Conflict of Interest.

Other Forms of Author Control

Where consistent with UKZN's obligations to third parties, an Affected Party who is the author of a UKZN-owned copyright work may, with the agreement of their line management and all of their co-authors, make a written request to the IPTTO for:

a licence to commercially develop the work; permission to have the work openly distributed through royalty-free licences; and/or permission to have the work placed in the public domain.

These forms of Author control are explained in more detail in the following paragraphs:

Licensing to Authors: Authors may, in writing, request control of their copyrighted works through a grant of exclusive commercial licence rights. Consistent with the public interest, UKZN may grant the request for Author control but UKZN will retain title to the work, with the right to use it for internal purposes, the right to the payment of appropriate royalties, and the right to withdraw such licensing rights after expiry of three (3) years from the date of signature of the licence agreement if the authors have not achieved effective dissemination as agreed. In addition, such arrangements will be subject to UKZN's Conflict of Interest policies.

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Where such requests relate to major projects that typically involve multiple Authors and long development periods, determining the most effective course for dissemination will require discussion and special negotiation with the IPTTO.

UKZN will respond to Author requests made under this policy within ninety (90) days. However, in those cases where the work, generally Software, is not sufficiently developed to allow proper assessment, UKZN may require additional development prior to responding to an author request.

Public Domain and Open Distribution: Authors may, in writing, request that otherwise copyright works, including computer Software, be placed in the public domain, or be openly distributed through royalty-free licences, if such action will promote widespread use, for example by providing a means to establish a new standard of Software such as a computer operating system. In responding to a request for public domain placement, UKZN will weigh the advantages of improved access, the complexity of the work and whether or not it is ready for effective public use, whether its quality can be maintained, and the Author's reasons for seeking this mode of dissemination.

To comply with the Regulations to the IPR Act, 2008, any such arrangement for placing a copyright work into the public domain will be subject to prior approval from NIPMO, if said work falls within the definition6 of Intellectual Property for purposes of the Act. Most forms of copyright works are not affected by the Act and so will not require reporting to NIPMO; the IPTTO will consider whether a particular work is affected or not.

TRADE MARKS

Trade Marks owned by UKZN are to be licensed through the IPTTO. Any exceptions to this procedure must be approved in advance by the Deputy Vice-Chancellor (Research) who will be advised by the IP Steering Committee.

REGISTERED DESIGNS

Registered designs owned by UKZN are to be licensed through the IPTTO. Any exceptions to this procedure must be approved in advance by the Deputy Vice-Chancellor (Research) who will be advised by the IP Steering Committee. Designs not owned by UKZN also may be licensed through the IPTTO when offered for licensing by the UKZN-affiliated developer of such a design and accepted by the IPTTO. In general, design-generated royalties will be allocated as set forth in Clause 4.3.

6 ‘‘Intellectual property,’’ for purposes of the IPR Act, 2008, means any creation of the mind that is capable of being protected by law from use by any other person, whether in terms of South African law or foreign intellectual property law, and includes any rights in such creation, but excludes copyrighted works such as a thesis, dissertation, article, handbook or any other publication which, in the ordinary course of business, is associated with conventional academic work. – per Definitions Section, “INTELLECTUAL PROPERTY RIGHTS FROM PUBLICLY FINANCED RESEARCH AND DEVELOPMENT ACT, Act No. 51 of 2008.—————————

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TANGIBLE RESEARCH PROPERTY (“TRP”)Identification: Each item of TRP should have an unambiguous identification code and name sufficient to distinguish it from other similar items developed at UKZN or elsewhere. The IPTTO should be consulted for assistance in developing appropriate identification systems.

Distribution of Biological TRP to Research Colleagues: Biological materials are in many cases patentable and licensed for commercial purposes under various types of patent licences. They are also a form of tangible research property which can be distributed for commercial and/or research purposes with or without patent protection.

Biological TRP owned by UKZN can be distributed for research purposes with minimal conditions attached. Any such distribution is subject to an agreement by the recipient that commercial development or commercial use or further transfer of the biological material is not to be undertaken. An example of such an agreement for use in connection with biomaterials is Form IP3, "UKZN Materials Transfer Agreement". In addition, the principal investigator may wish to control subsequent use, for example, by requiring recipients to follow a specific research protocol in the use of the biological materials.

When distributing biological TRP to research colleagues outside the laboratory, costs of the materials and handling may be recovered from the recipient, and returned to the account which funded those costs. When costs are charged for TRP distribution, adequate documentation must be maintained for audit purposes. If there is a possibility of biohazard or other risk associated with the transport, storage, or use of a particular biological TRP, or if the recipient is likely to use the TRP for clinical research, the IPTTO should be contacted for advice on the appropriate form of disclaimers of liability and indemnities.

If the biological TRP was developed under a sponsored research agreement (i.e. a contract), the IPTTO should be contacted to advise on possible contractual obligations with respect to the TRP prior to its distribution for non-commercial purposes. Distribution of biological TRP which is part of a patent or patent application should be coordinated through the IPTTO.

Distribution of Computer Software for Research Purposes: The distribution of UKZN-owned computer software to colleagues for research purposes must be coordinated with the IPTTO if the software has potential commercial value, if the principal investigator wishes to control subsequent use, or if it is subject to the terms of a sponsored research agreement. The IPTTO will provide wording for the distribution agreement necessary to preserve commercial value and will arrange for trade mark and copyright registration as appropriate. Other TRP: Distribution of TRP other than biological TRP should follow the procedures outlined in this policy for computer Software. Commercial Distribution of TRP: It is UKZN policy that any commercial distribution of UKZN-owned TRP be handled only through the IPTTO. Software should be submitted to the IPTTO in the same fashion as a patentable Invention, for which the first step is preparation and submission of a UKZN IP Disclosure Form (see Form IP1).

If TRP developed by UKZN as a result of research activities is to be distributed to outside users for commercial purposes, the distribution agreement must contain provisions negotiated by the IPTTO covering the terms under which the property may be used, limits on UKZN's liability for the TRP or products derived from it, and other conventional licence agreement terms including those relating to any intangible property rights (such as patents) which also may be associated with the use of the tangible property.

INCOME DISTRIBUTION PROCEDURE

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Cash benefits derived from the Commercialisation of IP will be distributed on a quarterly basis as follows:STEP 1: If revenues are less than R1 million, calculate a 20% share7 of the revenue for

the IP Creators and pay them that amount.STEP 2: Determine all direct and indirect IP protection and Commercialisation costs

(including, without limitation, all costs for filing, prosecution, registration and maintenance of IP applications, drafting and administration of related contracts, and Commercialisation), and subtract from revenues to give the nett revenues.

STEP 3: Pay the direct and indirect costs back to the IPTTO, UKZN Innovation and any other party which has incurred costs.

STEP 4: Assign the nett revenues to stakeholders in accordance with policy and contractual arrangements, making allowance for any amounts already paid out to IP Creators in accordance with STEP 1.

STRUCTURES ASSOCIATED WITH INTELLECTUAL PROPERTY & INNOVATION

Intellectual Property and Technology Transfer Office (“IPTTO”)The IPTTO falls under the auspices of the Research Office, and is responsible for identifying, assessing and protecting Intellectual Property developed at UKZN.

The IPTTO is also responsible for putting in place contractual arrangements between IP Creators, external sponsors (e.g. industry) and UKZN structures. Contracts which are the responsibility of the IPTTO include those relating to IP assignment and benefit sharing, consortium agreements, and memoranda of understanding (“MOU”) and agreement (“MOA”) between UKZN, researchers and sponsors. The latter are typically required during the “proof of concept” phase of a project.

In collaboration with UKZN Innovation, the IPTTO assists with Commercialisation of Intellectual Property, e.g. finding licensees for new Technology. Certain types of contracts are the responsibility of UKZN Innovation rather than the IPTTO; these include all commercial agreements, licensing agreements, project funding agreements, articles & memoranda of association, and shareholder agreements.

The IPTTO administers royalties due to researchers and UKZN in terms of licence arrangements. The office is also responsible for policing UKZN Intellectual Property, i.e. taking appropriate action in cases of infringement.

The IPTTO has an advisory role in all matters relating to IP, and engages in teaching and training within the University community.

Where the Research Office has responsibility for the negotiation, execution, and administration of all UKZN agreements with external sponsors of research grants and contracts, the IPTTO has particular responsibility for contracts and portions of contracts which relate to Intellectual Property. The IPTTO is responsible for ensuring that the rights of the sponsors in Technology developed under external grants and contracts are protected. The IPTTO is available to assist all principal investigators and sponsored programme

7 Required for compliance with Section 10(2)(a) of the “INTELLECTUAL PROPERTY RIGHTS FROM PUBLICLY FINANCED RESEARCH AND DEVELOPMENT ACT”, Act No. 51 of 2008.

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administrators in the negotiation and interpretation of Intellectual Property terms of grants and contracts.

Research priorities will have precedence over Technology development priorities. Thus, no grant or contract terms are to be accepted which inhibit the utilization by the public of the results of research at UKZN. In unclear situations or where there appears to be a conflict between the priorities, the DVC (Research) will be approached for a resolution.

UKZN Innovation (Pty) Ltd UKZN Innovation (Pty) Ltd, referred to in this document as UKZN Innovation, is a private company which was incorporated, inter alia, to:

be legally independent from UKZN, to acquire and to hold property and other rights in its own name, and to sue and be sued in its own name;

be under the ultimate control of UKZN at a macro level, and to be ultimately legally accountable to the Council of UKZN;

have a sufficient degree of flexibility so as to be able to develop and promote commercial activities.

The company has overall oversight of third stream funding activities, including Commercialisation of UKZN’s Intellectual Property. To this end, the company cooperates closely with the IP Steering Committee and the IPTTO.

UKZN Innovation has strong legal and operational ties with UKZN, in the form of shareholdings, agreements and mutually beneficial policies and procedures. Drawing on international experience and best practice, the company is mandated to develop a range of models to facilitate the further development and exploitation of identified third stream funding ventures, including but not limited to further separate legal entities to be created by UKZN Innovation, called ‘spin-off companies’, with UKZN Innovation maintaining strong legal, operational and oversight ties, to be developed by agreement on a case-by-case basis with these companies.

UKZN is the sole shareholder of the entire share capital of UKZN Innovation. As such, UKZN is entitled to the measure of control afforded to sole shareholders of private companies by the laws of South Africa, including but not limited to setting of the founding documents, and appointment of the Board of Directors of, UKZN Innovation.

IP Steering CommitteeThe IP Steering Committee comprises the following:

the Deputy Vice-Chancellor (Research) and the Dean of Research, who together represent the constituency of Researchers;

the CEO of UKZN Innovation; and

the Director of the IPTTO.

The Steering Committee must make recommendations regarding the day-to-day operations of the IPTTO. In particular the Committee will review IP as it is identified by the IPTTO and will take decisions on whether such IP merits protection and Commercialisation by UKZN, or whether it should be passed on to the National Intellectual Property Management Office (“NIPMO”) i.e. whether the University should “stand aside”.The IP Steering Committee shall meet at regular intervals (typically once a month).

UKZN Copyright Office

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The Copyright Office is based on the Westville Campus but controls copyright for all the campuses of UKZN. The office falls under the Legal Advisor’s office of the Registrar’s Division. The Copyright Officer employed for the Copyright Office is responsible for all copyright related matters. The Copyright Office will also assist UKZN and the Affected Parties, where applicable, in the protection of copyright belonging to UKZN and, where necessary, the collection of royalties on its behalf.

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APPENDIX A: TYPES OF INTELLECTUAL PROPERTY RIGHTS

The principal rights governing the ownership, use and disposition of Intellectual Property and Technology are known as "intellectual property rights” or IPRs, which are derived primarily from legislation granting specific rights in terms of two broad categories, namely industrial property (which includes Inventions, trade marks, industrial designs, plant breeders’ rights and trade secrets), and copyright (consisting mainly of written, electronic, and other forms of information, literary and musical works, computer programs, artistic, dramatic, photographic, and audiovisual works).

In the following overview, the various rights are examined in more detail. UKZN’s Intellectual Property & Technology Transfer Office (“IPTTO”) should be contacted for further information regarding these rights.

PATENTS AND PATENT RIGHTSA patent8 issued by the South African Patent and Trade Mark Office gives an Inventor the right to exclude all others from making, using or selling an Invention within South Africa, or importing it into the country, for a period which expires 20 years after the patent application is filed. Patents may also be granted in foreign countries; procedures for filing, regulations for patentability, and term of patent grant vary considerably from country to country (although most countries are harmonizing towards a 20-year term of grant calculated from filing). To be patentable in most countries, an Invention must be new, non-obvious and useful. In South Africa, an Invention is not patentable unless the application is filed at the Patent Office before any public disclosure takes place (whether written, oral or in any other form).

A South African patent application may be filed either as a provisional application (in which case a grace period of 12 months is available to file the complete specification), or a complete application in the first instance. Once an application has been filed at the South African Patent Office, the applicant has 12 months from the filing date to file corresponding applications in other countries; if this deadline is met then validity will be kept, even if publication of the Invention has taken place in the interim. These are so-called “convention applications”, named for the Paris Convention which adopted the 12-month grace period.

The 12-month period can be extended if use is made of the Patent Cooperation Treaty (PCT); under this treaty the “grace” period can be extended to 31 months in certain cases, i.e. just over two and a half years from filing. At the end of this period, corresponding patent applications can be filed in all PCT member countries without losing validity, despite publication having taken place in the interim. Once the 31-month deadline has passed it is no longer possible to file valid patent applications for the Invention.

The South African Patent Office does not conduct a substantive patent examination. In other words, it does not check whether the Invention which is the subject of an application is new, non-obvious and useful. It checks only to see that formalities have been complied with, for example that the Inventor(s) have been named.

While this way of running South Africa’s patent system has the advantage that patents can be granted very quickly by international standards (within two years) and that fewer resources are needed, it has the downside that patents are granted for almost all applications lodged at the South African Patent Office, irrespective of content. The system relies upon the courts to assess the validity of patents which come before them. In other

8 Patents are regulated by the Patents Act No. 57 of 1978

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words, the Court of the Commissioner of Patents will decide, upon application made to it for revocation of a patent, whether that patent is new, non-obvious and useful.

In view of the foregoing, patentees must keep in mind that their granted South African patent may not be valid in terms of the South African Patents Act, and should amend their patent into conformity with a corresponding patent granted by a foreign, examining Patent Office before contemplating litigation based on their patent in South Africa. For example, they could amend their South African patent to conform to a patent granted by the United States Patent Office, or the European Patent Office.

COPYRIGHTCopyright can be described as a "collection" of rights vested in a person who has copyright (the copyright holder). Copyright allows the copyright holder to prevent unlawful reproduction of the work.A copyright owner has the exclusive right to reproduce a work, prepare derivative works, distribute by sale or otherwise, and display or perform the work publicly.

Under South African copyright law9, copyright subsists in “original” works of authorship. “Original” means that a work was not copied from another source, but that the author has invested his/her own time, effort, money, skill, knowledge and endeavours to create the work.

Copyright protects the "artistic expression" of a particular literary, artistic or musical work, sculpture, computer program, video, motion picture or sound recording, photograph and so forth. The idea as a thought or abstract concept is not protected. Thus, a work will not be eligible for copyright unless it has been fixed in a tangible medium of expression, e.g. it has been written down, recorded, represented in digital data or signals or otherwise reduced to a material form. A broadcast or a programme-carrying signal will not be eligible for copyright until, in the case of a broadcast, it has been broadcast and, in the case of a programme carrying signal, it has been transmitted by a satellite.

Copyright can be infringed by a person who is not the holder of the copyright and who, without the consent of such holder, reproduces literary works, musical works, artistic works, photographic works, computer programs, cinematographic films, sound recordings, broadcasts, programme carrying signals and published editions. In the case of a literary, musical or artistic work, a cinematograph film or a computer program, copyright is also infringed if an “adaptation” of the work is made. An object shall not be taken to be a copy of a work of architecture unless the object is a building or a model of a building (this presumably sanctions the artistic drawing and painting of buildings).

As a general rule, the creator of a work owns the copyright in that work. Thus, the author of a work is usually the first owner of the copyright subsisting therein. However, there are certain exceptions to this general rule. For example, if the work is created during the course and scope of employment (e.g. with the University), the author’s employer will own the copyright in that work. Other exceptions to the general rule: a person who commissions the taking of a photograph, the painting or drawing of a portrait, the making of a sound recording or the making of a film, owns the copyright in that work.

For an individual author, copyright protection of a work extends for the author's life plus 50 years.

Unlike for a patent, no registration is required for copyright, which is automatically granted and which becomes immediately effective. In the case of films, however, registration in terms of special legislation allows additional rights. While no formal registration of copyright

9 Copyright Act No. 98 of 1978

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is required, copyright claims in any qualifying original work need to be indicated clearly as follows:

© 2008, 2009, 2010 University of KwaZulu-Natal.All Rights Reserved.

Copyright notice: No part of this publication may be reproduced or transmitted in any form or by any means, or stored in any retrieval system of any nature without the prior written permission of the University of KwaZulu-Natal. The University of KwaZulu-Natal assumes no liability for errors or omissions.

South African copyright holders not only have protection in South Africa, but also in all other signatory countries to the Berne Convention for the Protection of Literary and Artistic Works, as well as member countries of the World Trade Organization that subscribe to the GATT-TRIPS Agreement (Annex 1C of the Agreement establishing the WTO: “Trade-Related Aspects of Intellectual Property Rights.”)

TRADE MARKSA trade mark is a word, name, symbol, logo or device (or any combination thereof) adopted by an organization to identify its goods or services and distinguish them from the goods and services of other businesses. There is almost no limit to the form which a trade mark can take. South African Trade Mark law has its origins in both common law and legislation. The common law rights include actions for passing-off and unlawful competition, derived from the Roman Dutch Law. The primary legislation is the Trade Marks Act 194 of 1993. Four other statutes and the South African Constitution also have an impact on trade mark rights.South Africa’s Trade Mark Act 194 of 1993 defines a trade mark as a mark used or proposed to be used by a person in relation to goods or services for the purposes of distinguishing the goods or services in relation to which the mark is used or proposed to be used from the same kind of goods or services connected in the course of trade with any other person or entity. A trade mark registered under the South African Trade Marks Act is a powerful statutory right and provides an owner thereof with the right of exclusive use of the “mark.” The owner can exclude others from using the mark (or some closely resembling derivative thereof) for the same or even different products or services.South African trade mark legislation allows a wide range of marks to be protected, in addition to simple words and logos. For example, trade marks can be registered for the shape and colour of goods; service marks can be registered to distinguish a service as opposed to a product; and certification marks can be registered to certify the origin of goods.Trade mark registrations remain in place for ten years. After ten years a registration can be renewed, and can be renewed again after subsequent ten year periods in perpetuity.It is a fundamental requirement for registration that a trade mark must be capable of “distinguishing.” A mark which is reasonably required by other traders for use in connection with the particular goods or services is not registrable and the Trade Marks Act expressly excludes from registration designations as to the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or rendering the services, and shapes and colours which are necessary to obtain a specific technical result.Regarding the trade mark registration procedure, care must be exercised in the preparation of the specification of goods or services, since rights against infringers are confined to use of the mark or a confusingly similar mark on the same or similar goods or services covered in the specification.After a trade mark application is filed, it is examined by the Trade Marks Registry, both as to the distinctiveness of the trade mark itself and as to possible conflict with existing trade marks on the Trade Marks Register. After examination, an official action is issued in which the Registry indicates whether, and subject to what conditions, it would be prepared to accept and then register the mark. Once the Registry is satisfied that a trade mark can

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proceed to registration, it will issue notice of acceptance of the application and thereafter advertisement must be arranged in the Patent and Trade Mark Journal.After advertisement, applications are open to opposition by interested parties for a period of three months. If there is no opposition the trade mark will proceed to registration.Delays at the Registry mean that a period of up to four years may elapse from date of filing until receipt of a Registration Certificate.

DESIGNSIf an article has a novel appearance (e.g. by virtue of its shape, configuration, ornamentation and/or pattern), protection may be obtained for such an appearance by registering the 'design' of the article under the Designs Act10. Some articles or certain features of an article may be registered both under the Patents Act and the Designs Act. Traditionally this type of protection does not extend to the underlying principle of the article or its functional purpose, in the sense that a competing article which has a different shape and appearance would not infringe the registered design, even though the article fulfils the identical functional purpose. However, a design registration can be relied upon by the proprietor to prevent others from making, importing, using or disposing of articles within the same class and embodying the registered design or a design which is not substantially different. Different types of designs may be registered, including:'Aesthetic design' means any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of its aesthetic quality.'Functional design' means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, integrated circuit, a mask work, etc.'Integrated circuit topography' means a functional design which consists of the pattern, shape or configuration of the three-dimensional disposition of the electrical, electromagnetic or optical elements and circuitry of an integrated circuit.'Integrated circuit' means an article, in final or intermediate form, containing electrical, electromagnetic or optical elements and circuitry, which is capable of performing an electrical or an optical function, and in which at least a part of the electrical, electromagnetic or optical elements and circuitry are integrally formed, in accordance with a predetermined topography, in a semiconductor material.'Mask work' means a functional design which consists of a pattern of an image, however fixed or encoded, having or representing at least a part of an integrated circuit.

PLANT BREEDERS’ RIGHTSThe Patents Act provides that new varieties of plants produced by biological processes cannot be protected by a patent. Such new varieties (which may arise through cross-breeding or which may develop naturally, e.g. new botanical "sports"), can be protected by way of a Plant Breeders’ Right registration.

Plant Breeders’ Rights are obtained in terms of the South African Plant Breeders’ Rights Act, which is administered by the South African Department of Agriculture.

To qualify for protection, a variety of plant must be new, distinct, uniform and stable.

To be "new", propagating or harvested material of the variety must not have been sold or otherwise disposed of by, or with the consent of, the breeder for purposes of exploitation of the variety:

10 Designs Act No. 195 of 1993

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in South Africa for more than one year; in a Convention country or an agreement country in the case of varieties of vines and

trees, for more than six years; or in a Convention country or an agreement country in the case of other varieties for

more than four years;

…prior to the date of filing of the application for a Plant Breeders' Right.

Therefore, if plant material is made available to the public in South Africa, the applicant has a grace period of 1 year within which to apply for protection. If it was publicly made available in an applicable foreign country, the grace period is longer.

The variety is deemed to be:-

"distinct", if it is clearly distinguishable from any other variety of the same kind of plant, of which the existence on the filing date is a matter of common knowledge;

"uniform", if it is sufficiently uniform with regard to the characteristics of the variety in question, subject to the variation that may be expected from the particular features of the propagation thereof; and

"stable", if the characteristics of the variety remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of such cycle.

A Plant Breeders’ Right must be applied for by the breeder of a new variety. The "breeder" is the person who bred or discovered and developed the variety, the employer of such person, or the successor in title of such person.

The holder of the plant breeder’s right is granted exclusivity in respect of the production, sale or other form of marketing, import into and export from South Africa of propagating material or harvested material of the protected variety.

(Source: Spoor & Fisher website, 2009)

DOMAIN NAMES

A domain name is an identification label that defines a realm of administrative autonomy, authority, or control in the internet, based on the Domain Name System (DNS). It is a form of internet address created to identify and locate a specific resource on the internet.

A domain name serves as an easy-to-remember indicator of an IP address. An IP address is a 32-bit numeric address which identifies the location of certain information. Each domain name is linked to a certain IP address. Typing in a domain name to get to the IP address is easier than trying to remember and accurately type in the IP address designating the area at which the desired information is stored. A domain name is accordingly an address that improves accessibility to information on the internet.

Each domain name is made up of a series of character strings (called "labels") separated by dots. The right-most label in a domain name is referred to as its "top-level domain" (TLD). For example, in the internet address www.ukzn.ac.za , the word ukzn is a label and the designation ac.za is the TLD.Domain names have international application. In South Africa, there currently is no law governing the use and/or registration of domain names. However, bodies have been formed which can hear disputes.All Affected Parties should take note that the domain name ukzn.ac.za is controlled by UKZN.

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(Source: Wikipedia; also Janusz Luterek, Hahn & Hahn Inc., 2009)

TANGIBLE RESEARCH PROPERTY (“TRP”)

The term refers to those research results which are in a tangible form as distinct from intangible (or intellectual) property. Such property is often licensed for commercial purposes or distributed solely for research purposes in terms of a memorandum of understanding, materials transfer agreement or a formal licence.

Examples of tangible research property include, without limitation, integrated circuit chips, computer Software, biological organisms and material, engineering prototypes, engineering drawings, and other property which can be physically distributed. Although TRP may often have IPRs associated with it, such as biological organisms which may be patented or computer software which may be either patented or copyrighted, where appropriate, TRP may be distributed without securing Intellectual Property protection by using some form of contractual agreement.

TRADE SECRETS, CONFIDENTIAL INFORMATION & KNOW HOWThe law of trade secrets may be applied to almost any secret which is used in business and gives the owner of the trade secret a competitive edge over others. It is used to protect valuable proprietary information and is a commonly used form of protection for software. The most important aspect of this type of protection is that of secrecy. The protection will remain legally valid only as long as a trade secret is maintained. In order to maintain protection while a trade secret is being used, it is necessary to bind those individuals having access to the secret by a contractual agreement not to disclose it. Such agreements are called non-disclosure or confidentiality agreements.The term “confidential Information” includes within its scope any information of whatever nature, which has been, or may be, obtained directly or indirectly from UKZN by one of the Affected Parties, whether in writing or in electronic format, or pursuant to discussions held between Affected Parties and UKZN, or which can be obtained by examination, testing, research, visual inspection or analysis, including without limitation, all Software and associated material and documentation, all information relating to UKZN’s past, present and future research and development, or to UKZN’s business activities, products, technical knowledge, including without limitation, all UKZN’s trade secrets but specifically excluding information which has been disseminated by UKZN for public use or benefit.

The term “know-how” includes within its scope all of the following when such have been created or acquired by UKZN, or UKZN otherwise has rights in them or may employ them, provide them or modify them, or may otherwise acquire rights in them: all concepts, ideas, methods, methodologies, procedures, processes, know-how, formulae, techniques, models (including, without limitation, function, process, system, data and research models), templates; and generalised features of structure, sequence, organisation, logic, coherence and methods of operation of research, documentation and Software.

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APPENDIX B: FORMS

This Appendix contains the following forms:

Form IP1 UKZN Intellectual Property Disclosure Form

Form IP2 UKZN Intellectual Property & Proprietary Information Agreement

Form IP3 UKZN Materials Transfer Agreement

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