Publicly Funded IP
Ownership, and user rights of IP, which emanate from publicly financed R&D are governed by the IPR Act. The use of public funding in the creation of IP from R&D is a critical determination for whether or not the IPR Act applies. If public funding was used in the creation of the IP, then the IPR Act provides for three possible IP ownership options namely (a) the “default” position of ownership by a Recipient, (b) the co-ownership provision, and (c) the full cost arrangement in which IP ownership may be negotiated.
Commercialisation, in terms of the IPR Act, can be summarised as the process by which any IP is adapted or used to the benefit of the society or for commercial use on reasonable terms. Commercialisation is therefor, in this context, not limited to financial return only.
Institutions may opt for the creation of a spin-off or start-up company to commercially develop and market their IP. The new company may consist of institutional staff and/or student members, entrepreneurs not affiliated with the institution, or a combination of these parties.
If the spin-off or start-up appoints the institution to perform R&D (which may involve students) to build upon the “background IP” (IP held by the start-up/spin-off) and make payments to institution not on full cost basis the institution will own the IP.
The IP vesting in the institution could be transferred to the spin-off or start-up company with NIPMO approval, as appropriate.
NIPMO Act and Regulations
Requirements for setting up
The National Intellectual Property Management Office (NIPMO) was established in terms of Section 8 of the Intellectual Property Rights from Publicly Financed Research and Development Act 51 of 2008. NIPMO is established as a Specialised Service Delivery Unit (SSDU) with effect from 13 December 2013. The Head of NIPMO has powers conferred by legislation. NIPMO relies on the Department of Science and Innovation for all support services.
The long title of the IPR Act states “To provide for more effective utilisation of intellectual property emanating from publicly financed research and development; to establish the National Intellectual Property Management Office and the Intellectual Property Fund; to provide for the establishment of offices of technology transfer at institutions; and to provide for matters connected therewith.” The IPR Act was promulgated on 22 December 2008 and commenced on 2 August 2010 following the publication of a proclamation for its’ commencement in the Government Gazette.
NIPMO is mandated to ensure that “intellectual property from publicly financed research and development is identified, protected, utilised and commercialised for the benefit of the people of the Republic, whether it be for social, economic, military or any other benefit.”