2. Publicly Funded IP – Where are we now?
• Scope of the IPR-PFRD Act
• Implications of Ownership of IP in relation to the IPR-PFRD Act
• IP-related Transaction in relation to the IPR-PFRD Act
3. Purpose and Scope of the IPR Act
• Address IP created using public funds – No benefit
• Regulates IP developed by publicly financed institutions and
recipients
• IP created from 2 August 2010
• All types of IP excl. copyright in copyrighted
works...associated with conventional academic work
4. Implications of Ownership of IP in relation to
the IPR Act
• Ownership - Exclusive Right to exclude others from
exploiting the subject of the IP
• Generally Creator of IP = Owner of such IP
save, employer and employee relationship
• IPR Act regulates ownership of IP created using public funds
• Default Position: IP created by University = Owned by the
University
5. Implications of Ownership continued...
• Can the University and Private Company co-own IP?
• Co-ownership Requirement:
• Contribution of resources; AND
• Co-IP creation; AND
• Benefit Sharing with IP Creators ; AND
• Commercialisation Agreement
6. Implications of Ownership continued...
• Is it Possible for the Private Company to Wholly own IP?
• Fund R&D on Full Cost Basis – IP exclude from the IPR Act
• HOWEVER…Negotiate ownership with the University
– Full Cost Includes direct and indirect costs of R&D
7. IP-Related Transactions
• Types of Transaction
– Non-Exclusive Licence
• Local Entity – NO NIPMO APPROVAL
• Offshore Entity – NO NIPMO APPROVAL
• Unless not on arms-length basis, and royalty free
– Exclusive Licence
• Local Entity – NO NIPMO APPROVAL
• Offshore Entity – NIPMO APPROVAL
8. Effect of Non-Compliance
Failure by a recipient to comply with any provisions of the Act
and Regulations that require NIPMO approval of any IP
transaction or agreement relating to IP, shall render such
transaction or agreement null and void
