• PO Box 77000 • Nelson Mandela Metropolitan University

• Port Elizabeth • 6031 • South Africa • www.nmmu.ac.za

• Innovation Office

• Main Building • Floor 12 • 041 504 4309

• innovation@nmmu.ac.za • innovation.nmmu.ac.za

Intellectual property at the NMMU:

A brief introduction

This guide is intended as a very short introduction to Intel-

lectual Property (IP) at the NMMU, specifically looking at im-

portant legislation governing most of the NMMU’s IP, key

provisions of the NMMU’s IP policy and information on pa-

tents and the patenting process.

IP includes registrable IP such as patents, designs, trade-

marks and plant breeder’s rights. Each of these forms of IP

have a specific set of requirements (novelty being of the

greatest importance) which must be satisfied in order for the

owner’s rights to be legally protected. There are also non-

registrable forms of IP such as copyright, know-how and

trade secrets.

Both registrable and non-registrable forms of IP are man-

aged by the NMMU.

Innovation Office

Creating value for tomorrow

Meet the IO Team

Ms Jaci Barnett

Director

Ms Elsa van Wyk

Administrative Assistant

For further information and enquiries, please contact

the Innovation Office

Innovation@nmmu.ac.za

(041) 504 4903

Ms Mary-Ann Chetty

Senior Innovation Manager

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marks and plant breeder’s rights. Each of these forms of IP

greatest importance) which must be satisfied in order for the

The IPR Act came into effect on 2 August 2010 and significantly changed

the way that IP is managed at publicly financed institutions such as the

NMMU. The key issue is that publicly financed IP now belongs to the re-

cipient of the public funds i.e. the publicly financed institution. As most

research done at the NMMU is fully or partially “publicly financed”, the IP

thus belongs to the NMMU.

The NMMU has obligations under the IPR Act

These include establishing a technology transfer office, and developing

and implementing policies for the disclosure, identification, protection, de-

velopment, management and commercialisation of IP, including benefit-

sharing arrangements.

The NMMU established its Technology Transfer Office, the Innovation Of-

fice (IO) in 2007, and has developed and implemented an IP policy. IO is

responsible for managing, protecting and commercialising the NMMU’s IP.

Researchers have obligations under the IPR Act

The IPR Act places an obligation on researchers at publicly financed uni-

versities to disclose any inventions to their Technology Transfer Of-

fice prior to “public disclosure” of their research. Public disclosure

includes making available to the public through publications, written or

oral description, by use or any other way that would destroy the oppor-

tunity to apply for patent protection. Conventional academic publications

constitute public disclosure as well as abstracts, master's theses, doctoral

dissertations, presentations and posters.

The Intellectual Property Rights Act

(Intellectual Property Rights from Publicly Financed Research and Development

Act, Act 51 of 2008)

The object of the IPR Act is ”to make provision that intellectual property ema-

nating from publicly financed research and development is identified, protect-

ed, utilised and commercialised for the benefit of the people of the Republic,

whether it be for a social, economic, military or any other benefit”.

Pg 1

Patent protection does not prevent publishing. It only requires

that the publication needs to be timed so that it doesn't appear in a

journal or on the web until it is protected.

Publishing an invention allows for its exposure to the scientific commu-

nity and the rest of the public at an early stage, but does not prevent

others from using the information for commercial purposes. Patenting

an invention, on the other hand, increases the chances of cutting-edge

research discoveries being pursued and developed for the benefit of so-

ciety.

Researchers have benefits under the IPR Act

The IPR Act ensures that researchers benefit from successful commer-

cialisation of their IP and the NMMU is obliged to have a benefit sharing

model in its IP policy.

Research funded by a private entity may still fall under the IPR

Act

If a private entity funds research, it only falls outside the IPR Act if it is

funded on a full cost basis. “Full cost” at the NMMU means direct costs

(including academic and contract staff time, consumables, travel, etc.)

plus 35% of direct costs as an indirect cost component. Even if re-

search is funded at full cost and thus falls outside the IPR Act, the

NMMU may still claim ownership of the IP depending on background IP,

the field and the funder.

A private entity can co-own IP with the NMMU under certain circum-

stances including if they partially fund it and contribute intellectually to

the IP.

If you are planning to present your research at a conference, publish a paper, or

otherwise publicly disclose something which may meet the criteria for patenta-

bility (novelty, non-obvious inventive step and useful), contact IO prior to the

public disclosure to learn more about protecting your patent rights.

Pg 2

The diagrams provided show different patent filing strategies which the IO

office employs, all of which provide a maximum of 20 years protection

from the priority date (earliest filing date).

Most countries in the world are signatory to the Patent Cooperation Treaty

(PCT). If a patent application is filed at the PCT, it gives the applicant up

to 30 months from the priority date to make a decision on which national

phase territories to enter.

Above is the typical process for national phase applications in examining

territories. Of course, different territories have their respective laws and

time frames in this regard.

Pg 7

Patents are commonly considered to be static lifeless certificates. In order

to really appreciate and understand the patenting process, they should be

viewed as living. Patents are consistently changing: from a patent appli-

cation, through prosecution to a granted enforceable right in a specific

territory.

Having a granted patent is a negative right. This means that the inventor

or patent owner has the right to exclude others from benefiting from the

invention by selling, offering to sell, making or using it.

Patent protection strategies

There are several different strategies to use in patent protection. Depend-

ing on the potential markets, partnerships or licensing potential, one type

of patent strategy may be favoured over another.

South Africa has a patent registration system and not a patent

examination system

This means that if a complete patent application meets the formal re-

quirements (such as all the official forms and payment of fees) it will pro-

ceed automatically to acceptance and grant without being examined. An

official certificate is issued for every granted patent by the South African

Patent Office.

Any disputes will be dealt with in court. Other territories such as the USA

and Europe examine the patent application before acceptance and grant.

In examining territories a process of patent prosecution occurs in order to

determine novelty and inventiveness, and to define the scope of the

claims.

Patents and the Patenting Process

The patent system allows for a patent owner to have a 20-year monopoly on

their product or process. This monopoly promotes and incentivises research and

development as it allows for a fair period of financial reward, but ensures that

the technology is open to the public.

Pg 6

The NMMU has to seek government approval for certain

commercial transactions

The IPR Act obliges the NMMU to seek approval from the National Intel-

lectual Property Management Office (NIPMO) when concluding certain

intellectual property transactions such as local or foreign IP assignments

(sales) and foreign exclusive license deals. The NMMU also has to en-

sure that the State has a royalty-free licence to use the IP for the

health, security and emergency needs of South Africa.

Before granting an exclusive licence to someone to use IP created, the

NMMU must ensure that the licensee is capable of developing the IP fur-

ther where required and undertaking commercialisation.

Pg 3

The IPR ACT can be found on IO’s website at

innovation.nmmu.ac.za

The NMMU’s IP policy must comply with the IPR Act and must also provide

sufficient guidance on management, protection and commercialisation of

IP without being inflexible. The policy covers issues of ownership and

benefit-sharing.

Ownership of IP vests in the NMMU

The University claims ownership of all IP developed during or consequent

to research conducted by any staff member, student or contractor in the

course and scope of their employment or studies.

The University does not claim ownership of creative works unless these

have been specifically commissioned by the University, and also may

waive rights in respect of undergraduate projects.

Teaching materials are not owned by the NMMU

Teaching material developed by a staff member or student as part of their

duties towards the University is owned by the staff member or student.

However, the NMMU has a right to use the teaching materials under a roy-

alty free license in perpetuity and may edit and change the material.

Benefits will accrue to creators/inventors

Any commercialisation income will be split between creators/inventors,

the Faculty/Department/Entity where the research took place and the Uni-

versity’s Central Finance Office.

For the first one million Rand of revenues that the NMMU receives from

commercialisation, the creators/inventors receive 20% of the gross reve-

nues; thereafter, the creators/inventors receive 30% of net revenues (i.e.

after commercialisation and patent expenses).

The NMMU’s IP policy

The aim of the NMMU’s IP policy to encourage and reward research and devel-

opment that leads to the creation of IP whilst fulfilling the main functions of the

University as an institution of learning and research.

Pg 4

For small projects, the creators/inventors receive more of the

benefit

Should the gross income be less than R50 000 and it appears unlikely

that it will become greater than R50 000 at any point in time, the crea-

tors/inventors will get the full amount of the income less expenses, but

with a minimum of 20% of gross income.

The NMMU commercialises IP through a wholly owned subsidiary

Intellectual property transactions are regarded as commercial transac-

tions and typically fall outside the core business of the university. The

NMMU has a wholly owned subsidiary called Innovolve (Pty) Ltd, through

which the NMMU’s IP is commercialised. After reviewing the IP and de-

termining that it is technically and scientifically sound, the NMMU will

assign or license the IP to Innovolve for commercialisation.

Licensing from Innovolve (Pty) Ltd is generally via one of two routes:

1. The IP is licensed to an external organisation in return for pay-

ments and royalties. The license may be exclusive (i.e. only one

license is granted) or non-exclusive and may be restricted to a

particular geographic area; a particular market or manufacturing

or processing sector.

2. The IP is licensed to a spin off company created by Innovolve. In-

novolve will hold shares in the spin off company and may receive

royalties on sales or dividends from its shareholding. The monetary

benefit from commercialisation of the IP is passed on to the NMMU

and creators.

Pg 5

The NMMU’s IP policy can be found at

www.nmmu.ac.za/techtransfer