A South African law regulating IP from the country’s publicly funded research is expected to take effect in June or July. The legislation is designed to protect research and ensure that its commercialization benefits the people of South Africa, according to McLean Sibanda, a senior patent attorney at the department of science and technology’s National Research Foundation. The final regulations are expected to be posted on the department of science and technology’s website and distributed to stakeholders by May 1 so that the public has a few months to become familiar with the law before it takes effect.
In comments on the draft regulations, Rory Moore, director of the Intellectual Property and Technology Transfer Office at the University of KwaZulu-Natal, said, “The Act seeks to address the situation where intellectual property, developed by researchers, lies idle at universities or is sold off to private companies, often overseas, with no benefit accruing to the university, the government, or the South African people.” Moore said that legislation passed in the U.S. and U.K. during the 1980s returned ownership of IP — which had previously vested in government — to the universities. The intent of the South African legislation appears to move ownership from individual researchers up to the institutional level and to the government level, in some instances.
Under the Act, each institution (universities, science councils, etc.) will have access to a TTO, which will determine whether identified IP, developed using public funds, is worth protecting and commercializing. If so, the institution can elect to assume responsibility for the costs and benefits of this protection, with some financial benefit passing to the researchers. Should the institution elect to forego the patenting and commercialization function, the National Intellectual Property Management Office (NIMPO) can elect to protect and/or commercialize the IP on behalf of the state. Should NIMPO pass up the opportunity to do this, the IP is then first assigned to any private entity co-funders of the IP and then to the creators of the IP. The Act rewards ingenuity and creativity by entitling inventors in an institution to a minimum of 20% of the gross revenues accruing to the institution for the first ZAR 1mn and a minimum of 30% of net revenues thereafter, according to Sibanda.
Cristina Pinto, business development and commercialization manager at Wits Enterprise — the IP commercialization organization for the University of Witwatersrand — says the Act develops a greater awareness of the value of IP and the need to exploit technology to improve society. “It is anticipated that the development of such awareness within the South African research community will permeate the greater African research community,” she says. The Act also provides a legislative environment in which institutions can negotiate IP rights with private industry when the research has been partially publicly funded. Previously, a “take it or leave it” attitude by industry forced universities to sponsor research for private companies, Pinto says. Other pluses include the provision of an IP fund to assist institutions in obtaining statutory IP protections and the creation of opportunities for local companies — especially small firms — to commercialize IP.
Source: Digital Journal