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Ip for postgrads 2014 philip hoekstra
- 2. ResearchContractsandIPServices Contents • RCIPS overview • Forms of IP and methods of protection • Patents • Confidential theses • Spin-out companies • UCT IP Policy – Copyright ownership • IPR from Publicly Financed R&D Act • Student-Supervisor MoU • IP Savvy
- 4. ResearchContractsandIPServices Research Contracts & IP Services
- 5. ResearchContractsandIPServices Research Contracts & IP Services
- 6. ResearchContractsandIPServices Forms of IP & Methods of Protection
- 7. ResearchContractsandIPServices IP Rights (IPRs) • Trade marks • Copyright • Design rights • Patents • Trade secrets • Know-how / confidential information • Domain names Statutory protection possible
- 8. ResearchContractsandIPServices IP Right Duration of Protection Trade marks ™ ® Indefinite, 10 yr renewal Copyright © Life of creator + 50 years Design right Aesthetic – 15 yrs Functional – 10 yrs Patent 20 yrs Trade Secret As long as it is secret! Not reverse engineered
- 9. ResearchContractsandIPServices Multiple layers of protection • Copyright • Patent(s) • Trade Mark • Design • Know how • Trade Secret
- 10. ResearchContractsandIPServices Multiple layers of protection
- 11. ResearchContractsandIPServices Multiple layers of protection
- 12. ResearchContractsandIPServices Patents • Philosophy of patents: public disclosure in exchange for limited monopoly to recover development cost and encourage innovation • Sharing of knowledge is great but even greater if there are funds to develop it further – Limited philanthropic funding available – Without a patent: unlikely that private company will spend money to develop it further (investment not protected) • Patents can be used: – Defensively: prevent others from using it / enforce monopoly (but this is expensive!) – Offensively: for trade, to secure investment
- 13. ResearchContractsandIPServices Patents • Further advantages of patenting: – Legal “package”: easier to contract with – You hold the cards: can control the quality of the products in the market; NB in medical applications • Application per country – no ‘international patent’ exists • Can only prosecute when patent granted: 2-6 years • Monopoly granted for 20 years from international filing date
- 14. ResearchContractsandIPServices US Patents granted, 1790–2008 Wikipedia http://en.wikipedia.org/wiki/Patent First 10,000 patents (July 1790 to July 1836) were destroyed in a fire in December 1836
- 16. ResearchContractsandIPServices Patenting Process 0 [mths] 30/ 31 Provisional Phase PCT Phase Regional / National Phase 2/7 yrs 12
- 17. ResearchContractsandIPServices Provisional Patent Application Provisional patent application Priority Date 0 12 Provisional Phase Review. Draft Full Patent Application
- 18. ResearchContractsandIPServices Provisional Patent Application Provisional patent application Priority Date 0 12 Provisional Phase Review. Draft Full Patent Application Can disclose publicly after filing
- 19. ResearchContractsandIPServices Patenting Costs 0 30/ 31 Provisional Phase PCT Phase Regional / National Phase 2/7 yrs 12 R12k to 50k R85k R 0.5 to R1.0 million
- 21. ResearchContractsandIPServices Invention Disclosure Form • Inventors vs enablers – Inventor: inventive contribution to solution of problem – Enabler: no inventive contribution • Inventor/enabler details • Full technical description • Extension / other applications • Planned public disclosure: NB • Funder details: may claim some rights • Associated Agreements • Potential commercialisation opportunities Download from: www.rcips.uct.ac.za/ip/overview
- 22. ResearchContractsandIPServices Patentability • Assessing patentability • Novel - objective • Useful • Inventive - subjective
- 24. ResearchContractsandIPServices What is not patentable in SA • A discovery • A scientific theory • A mathematical method • Rule/method for performing a mental act • Literary, dramatic, musical, artistic work • Presentation of information • Contrary to well established natural laws • Something that promotes offensive/immoral behaviour or is contrary to law • Plant variety • Biological process for the production of animals or plants, not being a microbiological process or the product of such a process • Method of treatment of the human or animal body by therapy, or diagnosis practised on human or animal body
- 25. ResearchContractsandIPServices Prior Art Search • “Prior Art”: fancy name for any disclosure made public before filing date of patent • Scientific literature • Google: general search • Patent literature: – UCT Prior Art Search Strategy – Google Patents – Patentscope – Esp@cenet – Access to TotalPatent database
- 26. ResearchContractsandIPServices Know what you’re looking for… • You know how when you learn a new word you suddenly see it everywhere…. • Know what you’re not looking for – i.e. what is not patentable • Scout for patents in your own field • Type in a few key words into Google Patents and read the patent specifications. Look at the claims. • See what can be patented and the types of things that researchers in your field are patenting • Contact RCIPS for guidance – RCIPS can get specialist advice from patent attorneys, or arrange a seminar on a specialist area
- 27. ResearchContractsandIPServices Public Disclosure What constitutes a public disclosure: • Thesis submission • Abstracts • On-line blog • Papers • Presentations (except closed within UCT) • Posters • Visitors Anywhere in the world! Can destroy patentability through own disclosure
- 28. ResearchContractsandIPServices Maintaining Confidentiality • Can discuss freely within UCT – with no external people present (until patent filed) • Collaboration agreements typically have confidentiality undertakings • Non-disclosure (NDA) or Confidential Disclosure (CDA) can be put in place before discussions
- 29. ResearchContractsandIPServices UCT Patenting Process • Screening for commercial potential & patentability • Appoint patent attorney • Assist preparation of priority patent specification (provisional or UK non-provisional)
- 30. ResearchContractsandIPServices Timeline Disclosure Prior Art Drafting Filed 1-2 days 1 month1-2 days Briefing Meeting
- 31. ResearchContractsandIPServices Timeline Disclosure Prior Art Drafting Filed 1-2 days 1 month1-2 days Briefing Meeting several days
- 32. ResearchContractsandIPServices Patent vs. Publish • Both objectives can be achieved – just get the timing right! Write paper File Publish time Disclose to RCIPS
- 33. ResearchContractsandIPServices Patent vs. Publish • Both objectives can be achieved – just get the timing right • Patenting is another mode of publication – patent databases – citation Write paper Disclose to RCIPS File Publish time
- 34. ResearchContractsandIPServices Confidential Thesis • Initiated by student on application • Valid reasons: – Commercial confidentiality – Third-party confidential information – Confidentiality required for access to materials – Patent outstanding • Invalid reasons: – Considerations of privacy and security – Third-party copyright issues – Publication deriving from a thesis is pending – High potential for litigation – Pursuit of business opportunities may be jeopardised
- 35. ResearchContractsandIPServices Confidential Thesis • MSc – Dean and DVC to authorise • PhD – Doctoral Degrees Board • Typically 6 mths • Maximum = 2 years • Student starts by completing the form • Work in conjunction with RCIPS
- 36. ResearchContractsandIPServices Funding Patent Applications • UCT Research Council (URC) grant RCIPS an annual patent fund • DST offer up to 50% rebate on UCT patent expenditure • Licensing agreements: recoup some of the patent expenses
- 37. ResearchContractsandIPServices Winner Inventors Competition Hendricks-Vicatos Maxillofacial Distractor • Winner 2011 Popular Mechanics Inventors Competition “Cutting Edge” category + Inventor of the Year • Inventors – Dr George Vicatos (Mechanical Engineering) – Dr Rushdie Hendricks (external, but registered PhD at Health Sciences) – James Boonzaier (Mechanical Engineering ex-student) • Already successfully installed in first five patients! BeforeBefore AfterAfter
- 38. ResearchContractsandIPServices Recent Spin-Off Companies • Antrum Biotech (Pty) Ltd Prof Keertan Dheda Health Sciences • Elemental Numerics Prof Arnaud Malan Mechanical Engineering • Seraptix CC Prof Jonathan Blackburn Health Sciences • PST Sensors (Pty) Ltd Profs Margit Harting & David Britton Science • Tuluntulu (Pty) Ltd Profs Mqhele Dlodlo & Gerhard de Jager Electrical Engineering
- 42. ResearchContractsandIPServices IP Ownership [not copyright] • Below Full Cost: UCT owns all IP outputs (not all copyright) with two exceptions: – Student works entirely away from UCT at employer’s facility, funded by employer. • IP Agreement entered into with employer. • Provision for separate agreement if inventive contribution made by supervisor – Undergraduate studies, except for final year engineering / other projects that are linked to research activities of a postgrad student / employee of UCT • May jointly own IP if IPR Act conditions are met • Above Full Cost: Funder may own IP
- 43. ResearchContractsandIPServices Tangible Research Property • UCT promotes distribution • Must inform RCIPS in advance (Materials Transfer Agreement) • Must consider Biodiversity Act • RCIPS can put a commercial agreement in place – Income dealt with as per other revenue – Unambiguous codes required – Identify IP creators
- 44. ResearchContractsandIPServices IP Ownership - Copyright UCT holds copyright in: • Banks of multiple choice test and examination questions • Syllabuses and curricula • Computer software to support academic or research administrative processes or the general operational management of UCT • UCT publications including content on the UCT websites • Photographs and digital images taken by Employees for UCT media or publicity or specifically commissioned by UCT • Specifically commissioned works and course materials that fall outside the scope of normal academic work • Computer Software developed as part of a research project unless assigned by research agreement to another party
- 45. ResearchContractsandIPServices IP Ownership - Copyright UCT automatically assigns to the author(s) the copyright, unless UCT has assigned ownership to a third party in terms of a research contract, in: • Scholarly and literary publications • Paintings, sculptures, drawings, graphics and photographs produced as an art form • Recordings of musical performances and musical compositions • Course materials, with the provision that UCT retains a perpetual, royalty-free, non- exclusive licence to use, copy and adapt such materials within UCT for the purposes of teaching and or research • Film
- 46. ResearchContractsandIPServices Thesis Copyright • Postgrad students own the copyright in their thesis • NB – not the IP content that is discussed! • Publishers • Clash with exclusive rights. – Rule GP8: student grants right to UCT to publish the thesis in whole or in part in any format that it deems fit. • Supervisor Permission • 3rd-party copyright
- 47. ResearchContractsandIPServices Open Source & Creative Commons • Open Source – default for teaching and research – NIPMO approval may still be required – RCIPS will make application (guidelines expected) • Creative Commons – supported by UCT (promotion of sharing of knowledge and the creation of Open Education Resources) – Authors have control over their material – Authors may apply to RCIPS to grant permission for material owned by UCT
- 48. ResearchContractsandIPServices Creative Commons Licenses Attribution (BY) Non-Commercial (NC) No-Derivatives(ND) Share Alike (SA) You must credit the licensor of the work You can only use the work for non- commercial purposes You may not create adaptations of the work You may create adaptations of the work, but these must be under the same licence as this work 6 Basic Creative Commons Licences Attribution (BY) Attribution – No Derivatives (BY-ND) Attribution – Non-Commercial – No Derivatives (BY-NC-ND) Attribution – Non-Commercial (BY-NC) Attribution – Non-Commercial – Share Alike (BY-NC-SA) Attribution – Share Alike (BY-SA) http://sitecore.jisc.ac.uk/publications/briefingpapers/2009/bpc reativecommons.aspx
- 49. ResearchContractsandIPServices Public Domain IP Creator or Funder desire release into public domain: • Where UCT are supportive of this, RCIPS will seek approval from NIPMO, where this is required in terms of the IPR Act
- 50. ResearchContractsandIPServices Key Responsibilities: Employees / Students / Visitors • Records – lab notebooks, etc. • Disclosure to RCIPS within 90d of making the invention • Review work prior to public disclosure • Ensure IP terms clear before sabbaticals • Leave UCT – negotiate rights for continued access • New employees – disclose background IP
- 51. ResearchContractsandIPServices Student – Supervisor MoU • Who funds the research (exclude bursaries)? • In terms of the funding arrangement, has the IP been assigned to the funder – (i.e. either because the full cost model has been applied to the project, or in terms of a research contract)? YES / NO (delete the non applicable)
- 52. ResearchContractsandIPServices IPR Act • Intellectual Property Rights from Publicly Financed R&D Act
- 53. ResearchContractsandIPServices IPR Publicly Financed R&D Act • Aims to encourage protection and commercialisation of IP from SA Government funded research for the good of SA citizens • Governs IP from publicly financed research – But if Full Cost, deemed subsidy exists • IP owned by UCT unless Full Cost model applied – Impacts relationship with funders in terms of IP ownership • Obligation to commercialise • Benefit share for IP creators stipulated
- 54. ResearchContractsandIPServices IPR Act • Scope • Publicly funded
- 55. ResearchContractsandIPServices Disclosure to RCIPS on Invention Disclosure Form Assessment by RCIPS Report to NIPMO. Twice Annually on Form IP7 [Reg 14(1)(a)] Failure to disclose - NIPMO takes IP [Act 14(5)] Refer to NIPMO [Form IP1] Protect No societal / economic benefit More work required Return to IP Creator (and Co-funder) 90d 30d 60d 30d Return to UCT Prior to Public Disclosure Zone
- 56. ResearchContractsandIPServices Inventor Responsibilities • Screen your work ahead of any public disclosure for protectable IP. • Disclose invention to RCIPS as early as possible. IPR Act requirement is 90 days • Assist with preparing, reviewing and signing documents relating to the exploitation of an invention • Maintaining confidentiality until provisional application has been filed
- 57. ResearchContractsandIPServices Screening your IP • On notification of thesis submission, or before!
- 58. ResearchContractsandIPServices Models for Commercialisation • Spectrum of inventor involvement – Essentially none – Lead, with industry contacts – Participant in spin-off company • Licensing • Outright sale • Equity • No double dipping allowed
- 59. ResearchContractsandIPServices Commercialisation Preferences: – Non-exclusive licensing – BBBEE / small enterprises – Optimal benefit to economy and quality of life of South Africans – IP Creators who demonstrate to IPAC that they have the capacity to operate and fund a spin-off business
- 61. ResearchContractsandIPServices Sabbaticals • Spending time in another institution’s lab? – Check other institution’s IP policy – Ensure necessary agreements are put in place prior to departure
- 62. ResearchContractsandIPServices Funding in the South African Innovation Space – UCT Perspective Research Development Start-up Business Growth NRF High Nett Worth Individuals/Consortia – “Angel Investors” THRIP UCT PreSeed Fund UCT Evergreen Fund SPII Venture Capital IDC Venture Capital IDC Private Equity Banks Stock Exch. TIA: Technology Development Fund TIA: Industry Matching Fund UCT TIA Seed Fund
- 63. ResearchContractsandIPServices Pre-Seed Fund Research Further Innovation Funding / Commercialisation Concept Funding Explorer Funding
- 64. ResearchContractsandIPServices UCT TIA Seed Fund • New in 2014 • Currently no limit to the number of proposals submitted for funding by an institution • Administered by the university – no Technology Innovation Agency approvals process • Designed to operate as a ‘gap fund’ to mature university projects and fill the TIA pipeline • Up to R500k avail. per project
- 65. ResearchContractsandIPServices UCT Laboratory Notebook • IP Best practice • Good Laboratory Practice • R20 per copy – [blocks of 10 ideally] • Made affordable through generous sponsorship – Celtic Diagnostics – Industrial Development Corporation (IDC) – Lasec – Merck – National Research Foundation (NRF) – Roche – Spoor & Fisher – Technology Innovation Agency (TIA) – The Scientific Group – United Scientific – Von Seidels – Whitehead Scientific
- 66. ResearchContractsandIPServices UCT Laboratory Notebook • How to keep a notebook – Prof Jennifer Thomson • Tips in footers – IP / Contracts / Funding • Info on Research Office, Postgrad Funding Office, RCIPS • Ordering process – see www.rcips.uct.ac.za
- 69. ResearchContractsandIPServices Inventors Guide • Preparation for filing a provisional patent – inventorship, info requirements • The Stage Gate Process and aims of Gate reviews • UCT’s approach to commercialisation • Pre-Seed Funding • Royalties and Rewards! • Given to inventors at time of invention disclosure
- 70. ResearchContractsandIPServices www.rcips.uct.ac.za • Bioprospecting • Entrepreneurship • Competitions • Seminars • Resources • Innovation / News
- 71. ResearchContractsandIPServices Become IP Savvy • Modular course in Vula – IP Policy – IPR Act – Patenting & Invention Disclosure – Screening your Research – Copyright • Pass the quiz, get certified Savvy
- 72. ResearchContractsandIPServices Contact RCIPS • Philip Hoekstra / Dr Andrew Bailey Philip.Hoekstra@uct.ac.za Andrew.Bailey@uct.ac.za 021 650 4015 Research & Innovation 2 Rhodes Ave Mowbray www.rcips.uct.ac.za