Research Contracts and IP Services IPR Act Lite Version
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Research Contracts and IP Services This lite version of the IPR
Act presentation provides an introduction to key information
Comprehensive information, more detailed presentations and copies
of the Act, its Regulations and various guidelines are available on
the RCIPS website
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Research Contracts and IP Services Intellectual Property Rights
from Publicly Financed R&D Act
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Research Contracts and IP Services Object of Act The object of
this Act is to provide for intellectual property emanating from
publicly financed research and development to be identified,
protected, utilised and commercialised for the benefit of the
people of the Republic, whether it be for a social, economic,
military or any other benefit.
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Research Contracts and IP Services Ownership of IP Full
CostOwnership A 70%, royalty-free license permitted BFunder When
the funder pays full cost or above, they may own the IP It is a
negotiation and UCT may charge a margin above full cost, to reward
the researchers expertise
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Research Contracts and IP Services NOTES a) If IP is claimed:
all projects need to be costed at full cost. Template spreadsheets
have been developed and can be downloaded from the RCIPS website.
Your Faculty Finance Office can assist you with preparing full cost
budgets b) Terms under which funds are provided need to be known
and considered before the submission of a proposal c) Unless
otherwise agreed in a faculty, all budgets must be signed off by an
authorised faculty official (FO) and where applicable the PI and FO
must confirm that project was budgeted at full cost Costing of
Research Projects a)A Client/Funder can only claim rights to
Intellectual Property if at least the full cost of the project is
charged (this includes the cost of GOB-paid staff members working
on a project) b)If a foreign entity wishes to own the rights to the
IP, the above apply and in addition Reserve Bank approval is
required
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Research Contracts and IP Services Government Rights Act
Non-exclusive, royalty-free, non- transferable, worldwide licence
for use by Government for health, security & emergency needs
Non-commercialisation Walk-in rights : Failure to disclose
assignment of IP to government Non-exclusive, royalty-free, non-
transferable, worldwide licence for use by Government for health,
security & emergency needs Non-commercialisation Walk-in rights
: Failure to disclose assignment of IP to government Regulations "
The intellectual properly under this transaction was created with
support from the South African Government; ((under the contract
number where applicable) awarded by (identify the Funding Agency or
relevant government department) where applicable and is subject to
the requirements of the South African Intellectual Properly Rights
from Publicly Financed Research and Development Act, 2008 and its
regulations (Act 51 of 2008"). The South African Government has
certain rights to the intellectual property in terms of sections
11(1)(e), 11(2) and 14 of Act 51 of 2008". Consult with recipient
to address non- commercialisation/non-performance Clear
proclamation process of walk-in rights " The intellectual properly
under this transaction was created with support from the South
African Government; ((under the contract number where applicable)
awarded by (identify the Funding Agency or relevant government
department) where applicable and is subject to the requirements of
the South African Intellectual Properly Rights from Publicly
Financed Research and Development Act, 2008 and its regulations
(Act 51 of 2008"). The South African Government has certain rights
to the intellectual property in terms of sections 11(1)(e), 11(2)
and 14 of Act 51 of 2008". Consult with recipient to address non-
commercialisation/non-performance Clear proclamation process of
walk-in rights
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Research Contracts and IP Services NIPMO Referral / Reporting
Four main categories of referrals / reporting, which is undertaken
by RCIPS: Intellectual Property that is unwanted by UCT, but is
deemed to have commercial or societal benefit ad hoc Specific
trigger Funder terms in contracts and certain IP transactions ad
hoc Routine reporting on IP Management every 6 months Full Cost
Model adopted by UCT every 2 years With referrals, the Act
stipulates the period within which NIPMO must respond. If they do
not, the permission is deemed granted.
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Research Contracts and IP Services Referral: Contract Terms
Assignment (transfer of ownership) of IP Exclusive license
agreements with foreign entities Upfront prior to contract signing:
Where outputs will be released into the public domain e.g. research
generating OpenSource software which will be release] 60 day
approval period Licensing not at arms-length / below market value /
royalty-free 60 day approval In collaborative research:
Commercialisation on a royalty-free basis 30 day approval Research
outputs should not be commercialised 30 day approval Note that
licenses for research, development and education (i.e. non
commercial use) have no restrictions.
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Research Contracts and IP Services Collaborations In terms of
IP arising from collaborative research funded by one or more
international funding / donor organisations, or research
institutions, UCT must: Retain ownership of IP developed by UCT
researchers and co-own jointly developed IP Use reasonable
endeavors to ensure that commercialisation of the IP Provide access
to collaborators in line with international norms / agreements IP
can be licensed to collaborators and even assigned (although NIMPO
approval required and all usual conditions relating to on-shore and
off-shore transactions remain) If access granted for
commercialisation by a collaborator on royalty-free basis, then
NIMPO approval required at proposal stage Guidelines will be
published by NIPMO in respect of multi-party collaborative R&D
agreements
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Research Contracts and IP Services Obligation to Disclose to
RCIPS For grants/research contracts falling within the Act,
researchers are obliged to screen their work for protectable IP to
ensure that intellectual property emanating from any publicly
financed research and development is appropriately protected before
results of such R&D are published or publicly disclosed by
other means
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Research Contracts and IP Services Example 1 A funder funds a
research project that is supervised and worked on by Prof. X. They
pay for all materials and for the time of technical officers. Can
the funder claim the IP? No: Prof. Xs time not covered no overheads
were included project not costed at full cost Project falls within
scope of Act as there is inherent government subsidisation, i.e.
there does not need to be direct contribution of money by
government Funder could access IP via exclusive license
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Research Contracts and IP Services Contact RCIPS Piet Barnard,
Director Dr Andrew Bailey, IP Manager
[email protected]@uct.ac.za
[email protected]@uct.ac.za 021 650 3865 021 650
2425 Research Contracts & IP Services 2 Rhodes Ave Mowbray
reception: 021 650 4015 email: [email protected]@uct.ac.za
www.rcips.uct.ac.za