IP for Postgraduate students at UCT

1. Research Contracts & Intellectual Property Services
Intellectual Property (IP) for Post-
graduates
2015
Philip Hoekstra

2. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
RCIPS Overview

3. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Research Contracts & IP Services

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Research Contracts & IP Services

5. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
ORGANOGRAM
RCIPS Director
IP Manager
Principal IP
Officers (2)
Senior IP
Officer
Project
Manager
Business
Development
Manager
IP Intern Marketing
Intern
Research Contracts & IP Services

6. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Forms of IP & Methods of
Protection

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IP Rights
• Trade marks
• Copyright
• Design rights
• Patents
• Trade secrets
• Know-how / confidential information
• Domain names
Statutory protection
possible

8. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
IP Rights
• Trade marks
• Design rights
• Patents
• Domain names
• Copyright
• Trade secrets
• Know-how / confidential information
Registrable

9. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

10. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Multiple layers of protection
• Copyright
• Patent(s)
• Trade Mark
• Design
• Know how
• Trade Secret

11. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Multiple layers of protection

12. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Multiple layers of protection

13. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Design vs. Patent
• Design protects the way an article looks: functional or aesthetic
• Design is very specific, is not linked to materials, is dimensionless, applied to article
• Patent protects broader concept: how it works / material form of an idea
• Can patent and register a design
• Design comes into force faster and is cheaper
• Design has a 6-mth grace period in SA after public disclosure. Patent requires
absolute novelty

14. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patents
• Philosophy of patents: public disclosure in exchange for
limited monopoly to stimulate innovation
• Often needs patents to recover developmental costs
– 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:
– To prevent others from using the invention / enforce monopoly
(but this is expensive!)
– For trade purposes, to secure investment

15. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patentability
• Assessing patentability – 3 requirements:
• Novel – objective
Must not have been disclosed anywhere in the world through any
one disclosure before the first patent filing date (priority date)
• Useful
• Inventive – subjective
The solution described must not be obvious to a person generally
skilled in the art

16. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patentability
Reactor
Process / Method
Reaction
conditions
ProductsReactants
Intermediary
Catalyst

17. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
What is not patentable in SA
• A discovery
• A scientific theory
• A mathematical method
• Rule/method for performing a mental act, playing a game, or doing
business
• Literary, dramatic, musical, artistic work – copyright
• Presentation of information – registered design or copyright
• Contrary to well established natural laws
• Something that promotes offensive/immoral behaviour or is contrary
to law
• Plant variety – plant breeders’ right
• 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

18. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patent Content
• Title: deliberately vague (should not give invention away)
• Field of invention: very general
• Background of the invention: problem statement, most relevant
prior art, solution not given yet
• Summary of the invention: solution to problem mentioned for the
first time;
– This section reflects the claims
• Brief description of drawings: only titles
• Detailed description with reference to the drawings: heart of
patent
– Provide as much information about invention as possible
– Examples: must work!
• Claims: most important part as it defines scope of monopoly
– Claim 1: widest scope
– Subsequent claims: narrow down invention to specifics
– Legal language important
– Basis of claims must be found in rest of the spec

19. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Where to Patent?
Markets Manufacturing

20. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patenting Process
0 [mths] 30/
31
Provisional Phase PCT Phase Regional / National Phase
2/7
yrs
12

21. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Provisional Patent Application
Provisional
patent
application / UK
Priority
Date
0 12
Provisional Phase
Review.
Draft Full Patent Application
UK Search & Exam report on
patentability (6-9 months)

22. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Provisional Patent Application
Provisional
patent
application / UK
Priority
Date
0 12
Provisional Phase
Review.
Draft Full Patent Application
Can disclose
publicly after filing

23. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patenting Costs
0 30/
31
Provisional Phase PCT Phase Regional / National Phase
2/7
yrs
12
R12k to 60k R90k R 0.2 to R1.0
million

24. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Patenting at UCT

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26. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
UCT Patenting Process
• Disclose invention to RCIPS
– Meeting
– Invention Disclosure Form
– MSc thesis screening
• Assessment of commercial potential & patentability
• Appoint patent attorney
• Assist with preparation of provisional patent specification
– UCT pays costs
• Filing of patent application
• Prosecution of patent application

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Timeline

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Timeline

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Patent vs. Publish
• Both objectives can be achieved – just get the timing right!

30. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

31. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Invention Disclosure Form (IDF)
• Inventors vs enablers
• Inventor details
• Technical description
• Extension
• Planned public disclosure
• Funder
• Associated Agreements
• Potential commercialisation opportunities
• Prior Art Search
Download from:
www.rcips.uct.ac.za/ip/overview

32. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Inventors vs Enablers
• An “Inventor” must contribute to the inventive step that resulted in
the invention
– Inventive” contribution should be thought of in terms of a person’s
perception of what they have discovered, rather than what may actually
turn out to be valid in light of prior art.
• An “Enabler” is not involved in the inventive step, but may have
done significant work, as directed by the inventors to prove the
concept.
– Inventors may wish identified Enablers to share in any royalty income
accruing to the Inventors and this is recorded in the benefit share table
of IDF

33. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Maintaining Confidentiality
• Can discuss freely within UCT – with no external people
present
• Collaboration agreements typically have confidentiality
undertakings
• Non-disclosure (NDA) or Confidential Disclosure (CDA)
can be put in place
• Meetings – see UCT website for “attendance register”
• Confidential thesis procedure can be initiated:
– Thesis remains confidential up to 2 years
– Examiners bound by confidentiality

34. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Confidential Thesis
• Initiated by student (see RCIPS website for details)
• Valid reasons:
– Commercial confidentiality
– Third-party confidential information
– Confidentiality required for access to materials
– Patent protection is 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. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

36. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Sabbaticals
• Spending time in another institution’s lab?
– Check other institution’s IP policy.
– Ensure necessary agreements are put in place prior
to departure
– Do not sign any agreement from other institution until
reviewed by RCIPS!

37. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Continuous evaluation

38. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Viability assessment
• RCIPS Commercialisation Team
• Eventual market for the disclosed technology
• Format of technology when entering the market
(product, service, etc.)
• Competing products and benefits of disclosed
technology above competitors
• Team member structure and their availability in
further product development
• Vision of the lead inventor/s

39. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Plan of action
• Initial market opportunity must be determined
• The envisioned solution must be defined (within a certain level
of detail)
• Development lead time for technology to enter the market
• Development resources required to mature technology to
enter the market
• Development team available (or required) to mature
technology
• Strategic partnerships to be investigated for this technology
• Timelines of milestones corresponding to the IP gate review
meetings

40. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Business support services

41. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Project financials

42. START-UP COST ANALYSIS
Capital Costs Sources of Start-Up Capital
Land / Building Purchase R 0 Owner Equity Investment R 0
Building Construction R 0
Shareholder / Partner
Investment R 1 000 000
Leasehold Improvements R 50 000 Loan R 0
Mfg. / Production Equipment R 0 Line of Credit R 0
Shipping / Warehousing
Equipment R 0
Total Start-Up Capital
Available R 1 000 000
Office Equipment R 5 000
Computer Hardware R 10 000
Computer Software R 4 500 Total Start-Up Costs R 687 125
Office Furniture R 4 600
Office Fixtures R 2 000
Retail Displays / Equipment R 12 000 Capital Surplus / (Deficit) R 312 875
Vehicle Purchases R 0
Vehicle Lease Deposits R 0
Total Start-Up Capital Purchases R 88 100
Start-Up Inventory
Inventory R 127 625
Shipping R 41 000
Total Start-Up Inventory Costs R 168 625
Operating Costs
Office Supplies R 1 400
Marketing Collateral / Sales
Tools R 200 000
Advertising R 20 000
Professional Fees R 100 000
Web Site Development R 5 000
Training (workshop) R 50 000
Publications / Directories R 20 000
Insurance R 20 000
Other Expenses R 0
Deposit - Rent R 12 000
Deposit - Utilities R 2 000
Total Start-Up Operating Costs R 430 400
TOTAL START-UP COSTS R 687 125

43. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Business plan development

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Project Management

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Innovation Management

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Funding Landscape

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UCT Pre-Seed Fund
Research
Further Innovation Funding
/ Commercialisation
Concept FundingExplorer Funding
<R20k
Multiple awards
<R100k
Single award

48. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
UCT TIA Seed Fund
• Technology Innovation Agency (TIA)
• Launched Seed Fund – managed & administered by HEI
TTO
• Maximum of R500 000 per project
• HEI resources offset R500 000 investment (R1m+ real)
• Grant Funding – non dilutive
• Project automatically enter TIA pipeline for potential
follow on funding

49. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Policies and Law

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UCT IP Policy

51. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Thesis Copyright
• Postgrad students own the copyright in their thesis
– NB – not the IP content that is discussed!
• Publishers
• Rule GP8: student grants right to UCT to publish the thesis in whole
or in part in any format that it deems fit.
• Third-party copyright

52. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

53. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Creative Commons Licenses
http://creativecommons.org/

54. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Intellectual Property Rights from
Publicly Financed R&D Act

55. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property 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.

56. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
IP Rights from Publicly Financed R&D
Act
• Scope
• Publicly funded

57. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
IP Ownership
• Below Full Cost: UCT owns all IP outputs with three exceptions:
– Copyright in thesis: owned by author
– Student works entirely away from UCT at employer’s facility,
funded by employer, and IP Agreement entered into with
employer.
– 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

58. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Full Cost Ownership
A < UCT • The default position in terms of the Act is for UCT to own
the IP.
• The IP may be made accessible to the funder by licensing,
which may be exclusive.
• Can motivate and seek approval from NIPMO for
assignment to funder at end of project.
• Whilst IP may not be jointly owned, benefit from
commercialisation may be shared
• If paid > 70%, royalty-free license permitted
B < Joint Four conditions need to ALL be met:
1. Contribution of resources [money, background IP, people]
2. Agreement to commercialise the IP
3. Benefit share with IP creators (provided for in UCT IP
Policy)
4. Joint creation of the IP. If patented, at least one person
from funder’s team must be named as an inventor.
C = or > Funder • 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 researcher’s expertise

59. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Research 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 for certain transactions)
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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61. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property 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.

62. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property 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

63. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Commercialisation of IP

64. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Models for Commercialisation
• Licensing (UCT remains IP owner)
• Outright sale (Assignment of IP)
• Equity in spin-off company
• Spectrum of inventor involvement
– Essentially none, or
– Lead, or
– Participant in spin-off company

65. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Spin-Off Companies
• Antrum Biotech (Pty) Ltd
Prof Keertan Dheda
• Cape Ray (Pty) Ltd
Prof Kit Vaughan
• Lumkani
David Gluckman
Samuel Ginsberg
Emily Vining
Max Basler
Paul Mesarcik
Francois Petousis
• Straight Access Technologies (SAT)
Prof David Williams
Prof Peter Zilla
Prof Deon Bezuidenhout

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Apportionment of Income

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Inventor Mug

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Royalty calculation

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Fixed rate
• Royalty (GP)
= (Sales – COS) * 0.15 * (Sales – COS) / Sales
= GP2 * 0.15 / Sales
• Royalty (Sales)
= Sales * Rate
• Royalty (GP) = Royalty (Sales)

70. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Fixed rate
• Rate
= GP2 * 0.15 / Sales2
= (Sales – COS)2 * 0.15 / Sales2

71. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Fixed rate (example)
Product A contribution Royalty (on GP) Royalty (on sales)
Cost Sales GP
R 250 000 R 625 000 R 375 000 Y1 R 33 750 5.40%
R 265 000 R 662 500 R 397 500 Y2 R 35 775 5.40%
R 280 900 R 702 250 R 421 350 Y3 R 37 922 5.40%
Product B contribution Royalty (on GP) Royalty (on sales)
Cost Sales GP
R 375 000 R 1 062 500 R 687 500 Y1 R 66 727.94 6.28%
R 397 500 R 1 126 250 R 728 750 Y2 R 70 731.62 6.28%
R 421 350 R 1 193 825 R 772 475 Y3 R 74 975.51 6.28%

72. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Royalty rate - Stage of development

73. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Resources

74. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

75. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

76. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Inventors Guide

77. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
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

78. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
www.rcips.uct.ac.za
• Bioprospecting
• Entrepreneurship
• Competitions
• Seminars
• Resources
• Innovation / News

79. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Become IP Savvy
• Modular course in Vula
– IP Policy
– IPR Act
– Patenting & Invention Disclosure
– Screening your Research
– Copyright
• Pass the quiz, get certified Savvy

80. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Contact RCIPS
Philip Hoekstra
Philip.Hoekstra@uct.ac.za
021 650 4015 / 2609
Research & Innovation
2 Rhodes Ave
Mowbray
www.rcips.uct.ac.za

81. Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services
Thank you!