IP for postgrad students
Intellectual Property and you: a guide for UCT postgraduate students
Intellectual Property (IP) has become a far more important aspect of a researcher's life in recent years - especially with the introduction of the IP Rights from Publicly Financed Research and Development Act of 2008, which was promulgated on 2 August 2010.
IP at UCT is governed by our IP Policy. UCT's IP portfolio is managed by Research Contracts and Innovation (RC&I), who assist the research community with patent applications and the commercialisation of the IP.
In terms of the IP Policy, IP arising from all research at UCT (this includes research conducted by postgraduate students) is owned by UCT, unless it has been assigned to some other party (typically a funder) by contractual arrangement, or it is copyright relating to theses or publications (see the copyright section below).
There is a responsibility for researchers to report an invention that may be protectable to RC&I, prior to public disclosure. This is especially important in terms of the IPR Act, which gives a 90-day time limit from identifying a protectable invention to reporting it to RC&I, which acts as the university's technology transfer office in terms of the Act. To report an invention, an Invention Disclosure Form should be downloaded from the IP section, completed and returned to RC&I.
Provision is made in the IP Policy for inventors to share in the any revenue generated from commercialisation of the IP.
What are the Requirements for Patentability?
There are three key criteria for an invention to be patentable, it must be novel (not previously disclosed publicly), inventive (not obvious) and useful (can be applied in trade or industry or agriculture). RC&I will assist you with this assessment. Ideally we file a provisional patent application as late as possible to ensure that the patent's commercial life is maximised, but we need to file ahead of any public disclosure.
What is Public Disclosure?
Public disclosure occurs when your invention is mentioned in (oral or written) to people outside of UCT. It covers any disclosure ranging from formal journal articles, to abstracts, conference posters, on-line blogs and news articles (e.g. Monday Paper). Beware as even a throw-away line at the bottom of a paper regarding future work, may destroy inventiveness as it suggests how your invention could be performed, rendering it obvious to somebody in your technical field. Submission of your thesis for examination is also regarded as public disclosure as the examinations process is not confidential / closed and your thesis will ultimately land up on the library shelf. Contact RC&I well in advance of any planned public disclosure. With pre-planning you can successfully achieve both objectives of publishing and patenting and benefit from the rewards of both!
How to Maintain Confidentiality
Researchers can discuss their work freely within UCT, make group presentations, etc. as long as there are no external people present. It is wise to mention that the presentation content should be kept confidential within UCT as you may be seeking patent protection. When collaborating with other institutions / companies, the research contract or collaboration agreement will generally include confidentiality clauses. RC&I can also assist with putting a Non-disclosure Agreement (NDA) also know as a Confidential Disclosure Agreement (CDA) in place with a party that you are wishing to discuss your invention with. Once this is in place, you are free to discuss your work with them without destroying the possibility of patenting.
What about Copyright?
In terms of the IP Policy copyright in scholarly and literary publications vests in the author(s) - often journals require the authors to assign the copyright to the publisher and researchers are free to do this. Copyright in a dissertation or thesis vests in the student, subject to certain rights of the University that are published in rules for degrees, diplomas and certificates.
Graduates are often approached by publishers who wish to publish their theses. Students own the copyright and can grant permission (i.e. sign a publication agreement), but there are a number of things to consider:
- Check the background and standing of the particular publisher on-line to learn from the experience of others / their cautions.
- Check the publisher's terms and conditions to ensure that they are not in conflict with the rights granted to UCT, especially if the publishers want exclusive rights, e.g. this could conflict with rule GP8 where a student grants UCT the right to publish the thesis in whole or in part in any format that it deems fit (e.g. on-line).
- Be careful to check that your funder is in agreement with your publishing your thesis - there may be contractual obligations (e.g. release through open access, etc.) to either get their permission prior to publication or rights may have been assigned to the funder in certain instances. Your supervisor and/or RC&I should be able to assist with clarifying this.
- It is also important that you get your supervisor's approval for the publication of your thesis to ensure that it does not affect any planned journal publications - obviously publishing in leading journals is important for your career and one does not want to block that opportunity!
RC&I runs seminars and training courses throughout the year covering various aspects of IP and entrepreneurship. We encourage you to come to one of our IP seminars so that you are clear about your opportunities and responsibilities. Check our website for more information and useful resources on IP, its commercialisation and on starting businesses and entrepreneurship.
If you have any questions, please contact Dr Andrew Bailey (021 650 2425).