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Intellectual Property Information for Postgraduate students by Philip Hoekstra

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

Intellectual Property (IP) for Post-graduates2015

Philip Hoekstra

Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

RCIPS Overview

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Research Contracts & IP Services

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Research Contracts & IP Services

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ORGANOGRAMRCIPS Director

IP Manager

Principal IP Officers (2)

Senior IP Officer

Project Manager

Business Development

Manager

IP Intern Marketing Intern

Research Contracts & IP Services

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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

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IP Rights

• Trade marks

• Design rights

• Patents

• Domain names

• Copyright

• Trade secrets

• Know-how / confidential information

Registrable

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Multiple layers of protection

• Copyright

• Patent(s)

• Trade Mark

• Design

• Know how

• Trade Secret

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Multiple layers of protection

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Multiple layers of protection

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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

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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

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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

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Patentability

Reactor

Process / Method

Reaction conditions

ProductsReactantsIntermediary

Catalyst

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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

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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

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Where to Patent?

Markets Manufacturing

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Patenting Process

0 [mths] 30/31

Provisional Phase PCT Phase Regional / National Phase

2/7yrs

12

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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)

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Provisional Patent Application

Provisional patent application / UK

Priority Date

0 12

Provisional Phase

Review. Draft Full Patent Application

Can disclose publicly after filing

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Patenting Costs

0 30/31

Provisional Phase PCT Phase Regional / National Phase

2/7yrs

12

R12k to 60k R90k R 0.2 to R1.0 million

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Patenting at UCT

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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!

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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

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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

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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

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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

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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

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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

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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!

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Continuous evaluation

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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

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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

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Business support services

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Project financials

START-UP COST ANALYSIS

Capital Costs Sources of Start-Up CapitalLand / Building Purchase R 0 Owner Equity Investment R 0

Building Construction R 0Shareholder / Partner Investment R 1 000 000

Leasehold Improvements R 50 000 Loan R 0Mfg. / Production Equipment R 0 Line of Credit R 0Shipping / Warehousing Equipment R 0

Total Start-Up Capital Available R 1 000 000

Office Equipment R 5 000Computer Hardware R 10 000Computer Software R 4 500 Total Start-Up Costs R 687 125Office Furniture R 4 600Office Fixtures R 2 000Retail Displays / Equipment R 12 000 Capital Surplus / (Deficit) R 312 875Vehicle Purchases R 0Vehicle Lease Deposits R 0Total Start-Up Capital Purchases R 88 100

Start-Up InventoryInventory R 127 625Shipping R 41 000Total Start-Up Inventory Costs R 168 625

Operating CostsOffice Supplies R 1 400Marketing Collateral / Sales Tools R 200 000Advertising R 20 000Professional Fees R 100 000Web Site Development R 5 000Training (workshop) R 50 000Publications / Directories R 20 000Insurance R 20 000Other Expenses R 0Deposit - Rent R 12 000

Deposit - Utilities R 2 000Total Start-Up Operating Costs R 430 400

TOTAL START-UP COSTS R 687 125

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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

ResearchFurther Innovation Funding / Commercialisation

Concept FundingExplorer Funding

<R20kMultiple awards

<R100kSingle award

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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

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Policies and Law

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UCT IP Policy

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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

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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

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Creative Commons Licenses

http://creativecommons.org/

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Intellectual Property Rights from

Publicly Financed R&D Act

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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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IP Rights from Publicly Financed R&D

Act• Scope

• Publicly funded

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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

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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

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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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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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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Commercialisation of IP

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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

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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)

Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

Fixed rate

• Rate

= GP2 * 0.15 / Sales2

= (Sales – COS)2 * 0.15 / Sales2

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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%

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Royalty rate - Stage of development

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Resources

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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

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

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Inventors Guide

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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

Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

www.rcips.uct.ac.za

• Bioprospecting

• Entrepreneurship

• Competitions

• Seminars

• Resources

• Innovation / News

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

Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

Contact RCIPS

Philip Hoekstra

[email protected]

021 650 4015 / 2609

Research & Innovation

2 Rhodes Ave

Mowbray

www.rcips.uct.ac.za

Research Contracts & Intellectual Property ServicesResearch Contracts & Intellectual Property Services

Thank you!


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