No. 51 of 2008: Intellectual Property Rights from Publicly Financed Research and Development Act, 2008.
Property Management Office and the Intellectual Property .'und; to provide for the establishment ofoffices of technology transfer at intitutions; and to provide for matters connected therewith.
"BBBEE" means broad-hased black economic empowerment as defined in 5 section 1 of the Broad-Based Black Economic EmpowemlCnt Act, 2003 Act No.
"intellectual property creator" means the person involved in the conception of intellectual property in temlS of this Act and identifiahle as such for the purposes of ohtaining statutory protection and enforcement of intellectual property rights. where applicahle; "intellectual property transaction" means any agreement in respect of intellectua! property emanating from publicly financed research and development, and includes licensing, assignment and any arrangement in which the intellectual property rights governed by this Act are transferred to a third party; "Minister" means the Minister responsihle for the Department; "Nett revenues" means the revenue less the expenses incurred for intellectual property protection and commercialisation of the intellectual property, as may be prescrihed; "NIPMO" means the National Intellectual Property Management OOice established by section 8; "otf..,hore" means out..<;ide the l)orders of the Republic; "prescribed" means prescribed hy regulation; "publicly financed research and development" means research and development undertaken using any funds allocated by a funding agency but excludes funds allocated for scholarships and bursaries; "recipient" means any person, juristic or non-juristic, that undertakes research and development using funding from a funding agency and includes, m institution; "regulation" means any regulation made in terms of section 17 of this Act; "revenue" means all income and henefits, including non-monetary benefits, emanating from intellectual property transactions, and includes all actual, non-refundable royalties, other grant of rights and other payments made to the institution or any other entity owned wholly or in part by an institution as a consideration in respect of an intellectual property transaction, but excludes a donation and "gross revenues" shall have a corresponding meaning; "small enterprise" means a small enterprise as defined in section 1 of the National Small Enterprise Act, 1996 (Act No. 102 of 1996); "this Act" includes the regulations made in terms of this Act.
The ohject of this Act is to make provision that intellectual property emanating from puhlicly financed research and development is 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.
the people of the Repuhlic, partil.
where necessary, the State may use the results of publicly financed research and development and the attendant intellectual property in the interest of Ihe people of the Republic.
This Act applies to intellectual property emanating from publicly financed 5 research and development.
Subject to paragraph (b), the Minister may, in addition to the institutions to which this Act applies, by notice in the Gazettf', identify any other institution to which this Act applies if he or she is satisl1ed that the institution may develop intellectual property from publicly financed research and development.
Any identification contemplated in pamgmph (a) must be done with the concurrence of the Minister responsible for the institution concerned.
Subject to section 15(2), intellectual property emanating from publicly financed research and development shall be owned by the recipient.
A recipient that prefers not to retain ownership in its intellectual property or not to obtain statutory protection for the intellectual property must make the choice in accordance with the regulations and any guidelines published by NIPMO by notice in the Gazette; and within the period set out in section 5(1)(e), notify NIPMO of the decision and 20 the reasons therefor.
NIPMO may, within the prescribed period, after considering the reasons provided by the recipient in terms of subsection (2)(b) 1md any prejudice that may be suffered by the State if no statutory protection for the intellectual property is obtained, acquire ownership in the intellectual property and, where applicable, obtain statutory protection 25 for the intellectual property.
Should NIPMO decide not to acquire ownership in the intellectual property in term'> of subsection (3), NIPMO must, in writing, notify the recipient of its decision.
Subject to the reasons given in terms of suhsection (2)(b), and on notification contemplated in paragraph (a), the recipient must give the intellectual property creator 30 the option to acquire ownership in the intellectual property and to obtain statutory protection for the intellectual property, provided thal in the case where a private entity or organisation had provided some funding, such private entity or organisation shall suhject to section 10 first be offered such option before the intellectual property creator.
Management obligations and disclosure duties 35 5.
UJ in respect of an institution, put in place mechanisms to annually a'lsess, record and report to NIPMO on the benefits for society of publicly financed research conducted in thai institution.
An office of technology transfer is responsible for undertaking the obligations of the institution in terms of this Act.
1\vo or more institutions may with the concurrence of NIPMO establish a regional office of technology transfer.
NIPMO may, on terms and conditions determined hy it, provide assistance to institutions for the establishment of offices of technology transfer.
development of appropriately skilled personnel for the offices of technology transfer.
The functions of an office of technology transfer must be performed by appropriately qualified personnel whom, when considered collectively, has interdiscipUnary knowledge, qualifications and expertise in the identification, protection, management and commercialisation of intelle;tual property and in intellectual property transactions.
conduct eval uations on the scope of statutory protection of the intellectual property in all geographic territories subject to commercialisation potential of the intellectual property; and liaise with NIPMO as provided for in this Act.
There is hereby established an office within the Department, called the National Intellectual Property Milllagement Office (NIPMO).
The Minister may, by notice in the Gazette. assign the operation of NI PMO to any public entity whose objects are consistent with NIPMO's functions.
NIPMO must promote the objects of this Act, which includes the statutory protection, management and commercialisation of the intellectual property referred to it by a recipient in terms of section 4.
NIPMO must ensure that it has the capacity to consider tilly intellectual property referred to it by a recipient in terms of section 4, and to deal with it in accordilllce with this Act.
concluding any intellectual property transactions; or commercialisation of such intellectual property.
develop guidelines for intellectual property transactions involving non-South African entities illld persons, and manage the imrlementation of such guidelines; and monitor, evaluate and review the obligations of recipients in terms of this Act.
In addition to its other functions, NJPMO may do anything necessary to meet the objects of this Act and to carry out illlY other function consistent with those objects that may be prescribed.
Any administrative decision of NJPMO that adversely affects a recipient must be dealt with in terms of the Promotion of Administrative Justice Act, 2000 (Act No.3 of 2000).
Intellectual property creators at llil institution and their heirs are granted a specific right to a portion of the revenues that accrue to the institution from their intellectual property in term'> of this Act until such right expires.
((I) at least 20 per cent of the revenues accruing to the institution from such intellectual property for the first one million rllild of revenues, or such higher amount as the Minister may prescribe; and thereafter, at least 30 per cent of the nett revenues accruing to the institution 10 from such intellectual property.
The benefits contemplated in subsection (2) must be shared in equal proportions between the qualifying intellectual property creators or their heirs unless otherwise agreed between those creators and the recipient or determined in accordance with institutional policies.
The benefits to intellectual property creators and their heirs contemplated in subsection (2)(a) must be a first calIon the applicable revenue ahead of any institutional distribution.
the operations of the office of technology transfer; and statutory protection of intellectual property.
This section prevails over a provision of a law mentioned in the second column of Schedule 1 existing at the commencement of this Act to the extent that it is 25 inconsistent with such a provision.
Despite paragraph (a), any arrangement relating to benefit-sharing that existed at the commencement of this Act by virtue of a provision contemplated in that paragraph continues in terms of that provision as if this section had not been enacted.
Conditions for intellectual property transaction. .. 30 11.
exclusive licence holders must undertake, where feasible, to mllilufacture.
NIPMO may request that the exclusive licence contemplated in paragraph (j) be converted to a non-exclusive licence if a recipient fails to furnish the reasons within the period contemplated in paragraph (g), or if NIPMO is not satisfied with such reasons.
Each intellectual property transaction must contain a condition to the effect that, should a party fail to commercialise the intellectual property to the benefit of the people of the Republic, the State is entitled to exercise the rights contemplated in section 14.
Each intellectual property transaction involving assignment of intellectual property by an institution to a small enterprise in return for shareholding as a consideration must contain a condition providing that in the event of the liquidation of that small enterprise, the intellectual property shall revert to the institution.
The Minister may prescribe the terms and conditions for other intellectual property transactions involving assignment of intellectual property by a recipient.
subject to paragraph (c), offshore intellectual property transactions may occur only in accordance with prescribed regulations and any guidelines contemplated in section 9(4)(e); and any intellectual property transaction which does not comply with the regulations and guidelines requires prior approval of NIPMO.
A recipient wishing to undertake an intellectual property transaction offshore in the form of an assignment or exclusive licence must satisfy NIPMO that there is insufficient capacity in the Republic to develop or commercialise the intellectual property locally; and the Republic will benefit from such offshore transaction.
There is hereby established an Intellectual Property Fund to be managed by NIPMO.
finance any costs incurred by NIPMO for obtaining statutory protection of the intellectual property; and finance any costs incurred by NIPMO when acting in terms of section 14.
An institution may recover the costs incurred in obtaining statutory protection for the intellectual property contemplated in this Act from the Intellectual Property Fund to the extent determined by NIPMO; and on such terms as may be determined by NIPMO.
The rights acquired by the State in terms of this section are additional to the rights granted to the State in terms of any other legislation in the Republic.
NIPMO must conduct reviews of non-commercialised intellectual property in consultation with the recipients.
If a review contemplated in subsection (2) shows that the intellectual property in question can be commercialised, NIPMO must engage in further consultations with the recipient in an endeavour to ensure that the intellectual property is commercialised.
the intellectual property is still not being commercialised; or no agreement can be reached with the recipient.
NIPMO may, on behalf of the State, demand the assignment of rights to any intellectual property if a recipient fails to make a disclosure to NIPMO as provided for in this Act.
A private entity or organisation may become an exclusive licensee of intellectual property emanating from publicly financed research and development undertaken at an institution if such private entity or organisation has the capacity to manage and commercialise the intellectual property in a manner that benefits the Republic.
appropriate arrangements are made for benefit-sharing for intellectual property creators at the institution; and the institution and the private entity or organisation conclude an agreement for the commercialisation of the intellectual property.
Should the private entity or organisation mentioned in subsection (1) or (2) not commercialise the intellectual property, the provisions of section 14 of this Act shall apply with the changes required by the context.
Any research and development undertaken at an institution and funded by a private entity or organisation on a full cost basis shall not be deemed to be publicly financed research and development and the provisions of this Act shall not apply thereto.
For the purposes of paragraph (a) "full cost" means the full cost of undertaking research and development as determined in accordance with international financial reporting standards, and includes all applicable direct and indirect cost as may be prescribed.
For the purposes of this section, private entity or organisation includes a private sector company, a public entity, an international research organisation, an educational institution or an international funding or donor organisation.
Employees of NIPMO and the offices of technology transfer may not disclose any information in regard to any matter which may come to their knowledge in terms of this Act, or any work arising from the implementation of this Act, or by virtue of the office held by them to any person, except in so far as the provisions of the Constitution of the Republic of South Africa, 1996, the Promotion of Access to Information Act, 2000 (Act No.
in so far as it may be necessary for the effective governance and management of NIPMO or the offices of technology transfer, or for the purpose of due and proper performance of any function in terms of this Act; or upon an order of a competent court.
The Minister may make regulations regarding any matter that mayor must be prescribed in tenus of this Act; and any ancillary or incidental administrative or procedural matter that it is necessary to prescribe for the proper implementation or administration of this 5 Act.
This Act is called the Intellectual Property Rights from Publicly Financed Research and Development Act, 2008, and takes effect on a date determined by the President by proclamation in the Gazelle.