Introduction and Definitions

Objectives and Policy Assumptions

1. The core mission of the University of Cape Town is the education and training of students and the advancement, preservation and dissemination of knowledge. This Intellectual Property Policy recognises that University activities may lead to discoveries or inventions which further this mission. It provides a framework for governing the rights and responsibilities of all in relation to inventions and other creative processes arising from their activities.

2. The University encourages research and scholarship. One of the ways in which we do this is by protecting the rights and privileges which scholars traditionally enjoy in the pursuit of knowledge.

3. This Policy is intended to recognise and reward the innovative contributions of individual researchers and share the fruits of discovery.

4. The policy of the University is that the products of its research and scholarship must benefit society. We are thus committed to making Intellectual Property developed in the course of University research available under conditions which will most effectively promote its development and use for economic and social benefit.

Guiding Principles

1. These objectives will be implemented by:

   1. Making inventions developed in the course of University research available for use by third parties under conditions which will promote their effective development and application (including, where appropriate, securing formal intellectual property protection);

   2. Negotiating reasonable and equitable provisions for the disposition of patent and other rights with outside bodies and agencies;

   3. Providing recognition and incentive to inventors through a share in proceeds from their inventions;

   4. Working in partnership with inventors to exploit their inventions; and

   5. Using the funds which accrue to the University from intellectual property and the development of inventions to advance and encourage research and scholarship.

2. In carrying out this Policy, the University will adhere to ethical practices, strive to balance the interests of the University, the inventors/authors, research sponsors, and society at large, and promote equity and development.

Definitions

1. In this Policy, use of the term "Intellectual Property" includes (without limitation):

   1. Inventions, discoveries and other developments of a technical nature, whether or not these may be the subject of legal protection in terms of the legislation governing patents, copyright and registered designs;

   2. Works subject to copyright protection;

   3. The University name, badge and other trade marks;

   4. Tangible research property arising from research activities (eg prototypes, drawings and diagrams, biological organisms and material, reagents, and integrated circuit chips).

2. Reference to an "Invention" includes any discovery, invention or other development of a technical nature, whether or not patentable.

3. An "inventor" is a creator of Intellectual Property, whether or not patentable. An inventor may be referred to as an "author" where the Intellectual Property in question is a copyrightable work.

4. "Net income" is income after deduction of all costs of whatever nature expended by the University for the protection and exploitation of the Intellectual Property concerned, including but not limited to patent filing fees and marketing expenses.

5. "Private Work" and "Professional Work" have the same meanings as they are given in the following policy documents:

   1. Private Work Policy - PASS Staff

   2. Private and Professional Work Policy - Academic Staff other than Academic Staff on Joint UCT/PAWC conditions of service

   3. Private Work Policy - Academic Staff on University Conditions on the Joint Staff of the University and of the Province.

6. A "Referee" is an impartial, independent expert in the field.

7. "Significant use of University resources" is use of University resources in excess of office space, personal computers and library facilities, but excludes use for which the University is compensated in terms of the policies mentioned in sub-paragraph 3.5. The determination of whether use is significant must take into account (without limitation) factors such as time spent, area of research, type of equipment that is used and source of funding.

8. Reference to "UCT Innovation" includes reference to any other University grouping which may be appointed to perform the functions concerned.

9. "University resources" includes (without limitation) University and University-administered personnel, funds and facilities.

Applicability

1. This Policy applies to all staff, including full-time and part-time academic, administrative and support staff members, joint medical staff (eg those staff on conditions of service of the University or the Provincial Government of the Western Cape), research staff, to post-doctoral fellows, and to all students, but in particular to masters and doctoral students.

2. This Policy applies to visiting staff who make significant use of University resources, by agreement with the visitor and the visitor's employer.

3. This Policy does not apply to Intellectual Property developed solely terms of a private contract between a staff member or student and a third party, approved in compliance with the relevant policies, provided that in the case of any potential conflict of interest (real or perceived), the researcher must notify the University of the invention, or possible invention.

4. This policy applies to Intellectual Property developed in terms of a contract between the University and a third party.

5. Ownership of Intellectual Property arising from externally funded research is governed by the terms of the agreement between the University and the sponsor. The University must negotiate the intellectual property clauses of sponsored research agreements in accordance with the objectives of this Policy, after consultation with the staff member leading the research project concerned.

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Policy on Intellectual Property Ownership

Rights of the University to Inventions

An invention belongs to the University -

1. if it is made within the course and scope of employment or the professional activities of a member of staff; or

2. if it is made with significant use of University resources; or

3. unless the University has assigned ownership to a third party.

Rights of the University to copyrightable works

1. The University requires and holds copyright in work produced by staff in the course of their employment. The University will hold and retain copyright in work produced either to support or to be used in its core and/or support functions; and in other respects recognises and assigns the copyright to the authors of work in copyrightable works.

   Examples of the first category are: banks of multiple choice test and examination questions; syllabuses and curricula; multi-media materials produced to support a course or group of courses; computer software produced to support any academic or research or administrative process; and photographs taken by staff for University media or publicity.

   Examples of the second category are: scholarly and literary publications; paintings, sculpture, and photographs produced as an art form; and recording of musical performances and musical compositions.

2. The University assigns copyright in teaching materials produced by staff to the author(s) -

   1. except where the teaching materials have been commissioned by the University (as opposed to produced by the staff member to support his or her own, or by a group to support their own, teaching) in which case copyright rests in and is held by the University); and

   2. on condition that the University holds and retains a perpetual, royalty-free, non-exclusive licence to use, copy and adapt such materials within the University for the purposes of teaching and or research.

3. The University recognises that there may be cases where joint ownership of copyright in copyrightable works by the University and the author will be appropriate, for which prior agreement between the University and the author(s) must be entered into wherever possible to govern the rights and obligations of the parties to the works. Examples of such cases would be where one of the authors is not a staff member and the other(s) is (are).

4. Copyright in a dissertation or thesis vests in the student who has written the dissertation or theses, subject to the rights of the University provided in rules for degrees, diplomas and certificates.

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General Provisions, Procedures, and Sharing of Revenues

Trade Marks

No trade mark associated with the University or any University activity may be registered without obtaining prior permission from the University Council.

Distribution of Research Property

1. The University encourages the distribution of tangible research property that arises from research (just as it encourages the publication of all research for peer scrutiny) on appropriate terms, and provided that this distribution does not conflict with existing obligations.

2. A University researcher wishing to make such distribution must inform the University in advance. The University must then

   1. evaluate the tangible research property concerned;

   2. ensure that the University is entitled to make such distribution; and

   3. estimate its potential commercial value (including whether formal intellectual property protection should be secured prior to distribution);

   4. advise on appropriate terms for such distribution; and

   5. supply a material transfer agreement or other appropriate agreement to govern such distribution.

Procedure

1. All Intellectual Property issues, including any provisions in this Policy which require further clarification, must be referred in the first instance to UCT Innovation in the Department of Research and Innovation, which is responsible for administering this policy.

2. When it first becomes apparent that Intellectual Property has been developed which might be subject to this Policy, the inventor must immediately notify UCT Innovation.

3. UCT Innovation must evaluate the Intellectual Property concerned for factors including but not limited to patentability, third party rights, market potential, possible applications, inventorship, available budget and stage of development, and, in consultation with the inventor, make a decision on whether and where to file a patent application or seek other forms of statutory intellectual property protection, develop a marketing strategy and use its best efforts to licence or otherwise exploit the invention concerned, guided by the objectives of this Policy: all such actions by UCT Innovation must be made in good time.

4. If the University decides not to exploit certain Intellectual Property, or to discontinue exploitation of certain Intellectual Property, the inventor must be notified and will be entitled to request that the University assign all its rights in the invention to the inventor, who will be free to exploit the invention independently of the University, at the inventor's own cost. (Note: exploitation using funds in a UCT research entity constitutes exploitation at the University's cost.)

   1. The University is entitled to be reimbursed for any costs it has incurred in exploiting the invention concerned.

5. Each Head of Department must notify UCT Innovation of any visiting researchers in his/her Department who may develop, or be involved in developing intellectual property, so that an appropriate agreement is entered into with the visitor and the visiting researcher's employer before the visiting researcher begins work at the University.

Responsibilities of Inventors

1. An inventor must disclose the development of any Intellectual Property covered by this policy to UCT Innovation as early as possible.

2. An inventor may be required to make assignment of certain Intellectual Property in writing.

3. An inventor is expected to co-operate with UCT Innovation and assist in preparing, reviewing, signing, and abiding by the terms of all documents necessary for the exploitation of an invention (including but not limited to patent specifications, official forms, marketing material, technical descriptions, confidentiality agreements and licence agreements).

4. In the event that a patent application is under consideration or pending, an inventor must maintain the confidentiality of the invention until the patent application has in fact been filed.

5. An inventor must disclose the development of any Intellectual Property covered by this policy to UCT Innovation as early as possible.

6. An inventor may be required to make assignment of certain Intellectual Property in writing.

7. An inventor is expected to co-operate with UCT Innovation and assist in preparing, reviewing, signing, and abiding by the terms of all documents necessary for the exploitation of an invention (including but not limited to patent specifications, official forms, marketing material, technical descriptions, confidentiality agreements and licence agreements).

8. In the event that a patent application is under consideration or pending, an inventor must maintain the confidentiality of the invention until the patent application has in fact been filed.

Apportionment of Income

1. In respect of any Intellectual Property which is or becomes the property of the University in terms of paragraphs 5 or 6 of this Policy, the net income received by the University in respect of such Intellectual Property must be apportioned according to the following guidelines, unless the Deputy Vice Chancellor responsible for this policy, on a submission by the inventor, determines otherwise:

   1. That part of the net income up to R250,000 will be distributed as follows -
      • 50% to the inventor; and
      • 50% to the inventor's Department (but in the Faculty of Health Sciences, to the inventor's Division, and if the inventor is not associated with a particular Department, to the inventor's Faculty)

   2. That part of the net income exceeding R250,000 shall be distributed as follows -
      • 33.3% to the inventor
      • 33.3% to the inventor's Department (but in the Faculty of Health Sciences, to the inventor's Division, and if the inventor is not associated with a particular Department, to the inventor's Faculty); and
      • 33.3% to the University Research Committee.

2. If there is more than one inventor, the inventor's portion is shared between the inventors in the proportions agreed upon between the inventors. In the absence of an agreement to the contrary, the inventors receive equal shares.

Dispute resolution

1. Any disagreements or questions of interpretation arising under this Policy must, at the request of any interested party, be taken to an umpire chosen by the staff member from a panel of three names provided by the University Research Committee.

2. If the matter concerned cannot be settled by the umpire appointed in terms of sub-paragraph 12.1, an interested party may request that such matter be referred to a panel, whose decision is binding and final, appointed as follows:

   1. One by the author(s) or inventor(s)

   2. One drawn by lot from the elected members of the University Research Committee

   3. One by the Deputy Vice-Chancellor responsible for this Policy.

3. The umpire and the panel respectively may decide on the procedure to be followed at their absolute discretion.

Revised after consultation with staff
September 2004
As submitted to Council September 2004
Revised after consideration by Council
24 October 2004

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