The Intellectual Property Rights from Publicly Financed Research and Development Act (Act No. 51, 2008) (the IRP Act) was signed by the President and appeared in the Government Gazette on 22 December 2008 but only came into effect on 2 August 2010. Its primary goal is to ensure that IP outcomes from publicly financed R&D are protected and commercialised for the benefit of the people of South Africa - be it social, economic, military or some other benefit.
A copy of the Act (Act No. 51, 2008) Regulations and Guidelines may be downloaded from the top right-hand panel of this page.
The National Intellectual Property Management Office (NIPMO) has been established to implement the IPR Act. RC&I acts as UCT's liaison with NIPMO ensuring UCT's compliance with the IPR Act, especially in terms of reporting requirements. Any specific terms in research contracts or IP transaction agreements that require referral to NIPMO are also managed by RC&I.
When does the Act Apply?
The Act applies to South African government funded research and development conducted by UCT using funds from the South African State or State Funding Agency/Organ that funds research and development (this includes partially government funded projects (e.g. THRIP) and contract research that is not conducted at Full Cost). IP arising from the research becomes owned by UCT (or partially owned if other funders participate in a project) and the specific criteria for joint ownership are met.
Projects conducted at Full Cost do not fall within the scope of the Act. Full Cost is where all direct and indirect costs attributable to conducting the project [including the cost of GOB staff] are charged to the funder.
What IP is Involved?
The Act defines IP as "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 publication which, in the ordinary course of business, is associated with conventional academic work." Note although the thesis or paper is exempt [the actual written work which is covered by copyright] the invention that may be described is not exempt!
Presentations are made to UCT researchers regarding the Act and its impact on them, check our seminar page. If you missed the presentation, download the slides and the accompanying soundtrack (two separate files) from the right-hand panel. Our online training course "IP Savvy", which is hosted on Vula, also contains a module on the IPR Act. Also review the FAQs leading off this page as many of the general questions have been answered there.
Download (right-hand panel) an OpEd article written by Dr Andrew Bailey, that appeared in Business Day, on how the Act impacts universities.
Obligation on Researchers
Researchers using State funding are obliged to disclose any inventions to RC&I prior to publication of their research. Publication in this sense would be anything involving 'public disclosure' which would destroy the opportunity to apply for patent protection of an invention.
Examples of public disclosure includes: oral presentations at external meetings and conferences; on-line informal 'blogs' and websites; submission of a thesis for examination; publication.
UCT Invention Disclosure Forms can be downloaded here and should ideally be submitted to RC&I two months prior to intended publication (a shorter timeline, although not ideal, can be accommodated). Also visit the IP section of this website to learn more about the processes involved and considerations when screening your work to determine whether there is anything that may be protected, e.g. through patenting. Useful information is provided on the Patent Process page.
Impact on Our Funders and Commercialisation Partners
Key points are:
- A Funder can negotiate with UCT to wholly own the IP generated, with the requirement that the R&D is conducted according to a Full Cost Model' (i.e. inclusive of indirect and direct costs as defined in the Regulations), which may also include a margin.
- In terms of the IPR Act, UCT declares the Full Cost Model in use at the university to NIPMO. NIPMO reviews and approves the Full Cost Model. Confirmation of NIPMO approval for UCT's Full Cost Model can be downloaded from the right-hand panel.
- A Funder may become a co-owner of IP from publicly financed R&D provided that all of the following conditions have been met: (1) there is benefit share to reward IP Creators (2) there is joint creation of IP (3) there is an agreement to commercialise the IP and (4) there is a contribution of resources by the funder (which can include background IP, in-kind contributions, etc.). The most difficult of these to achieve is the joint creation of IP, as this cannot be guaranteed upfront. (Joint creation means being named as an inventor on a patent).
- Although not preferable, an exclusive license can be granted to a licensee as long as they have the capacity to commercialise the IP and it is done in a manner that benefits the Republic.
- The nature and conditions of the license agreement are determined by UCT, but preference needs to be given to non-exclusive licensing, BBBEE and small enterprises.
- The State retains 'walk-in rights' for health, security and emergency needs of the Republic, for IP that is subject to the Act (i.e. not full cost model funded R&D).
- NIPMO must approve offshore IP transactions.
UCT IP Policy
The UCT IP Policy was revised in 2011 to take the Act into account, especially the different arrangements around benefit share by inventors.
Clinical Trials in phases 1 to 3 are regarded as “research” and as such fall under the IPR Act where they are not conducted at full cost. There have been challenges negotiating contracts with philanthropic funders who are focussed on diseases such as TB, cannot pay Full Cost, but want certain IP rights. It is important for both the university and the country to be able to participate in these trials as there are broad benefits.
NIPMO has granted upfront approval for IP transactions (that include royalty-free non-exclusive licenses, offshore exclusive licenses, or local and offshore assignments) for specific infectious diseases which include HIV/Aids, TB, malaria and neglected diseases (see the NIPMO advice on clinical trials that can be downloaded from the right-hand column for the full list of neglected diseases), where a philanthropic organisation or its intermediary is funding the trial, at below full cost. There needs to be an objective to making the drugs being tested available at a preferential rate or reduced cost in developing countries.
Serendipitous IP arising during the course of the trial would still be owned by the university in these below full cost projects and is governed by the usual provisions of the IPR Act.
RC&I needs to report six-monthly to NIPMO on such clinical trial agreements that have been entered into. This special dispensation is available on a trial basis till 30 August 2016.