WALTER SISULU UNIVERSITY POLICIES AND PROCEDURES

TITLE: INTELLECTUAL PROPERTY POLICY

POLICY NUMBER / APPROVED BY / Council: 01/04/2011
DATE / 1st April 2011 / MINUTE
EFFECTIVE DATE / 3rd November 2010 / NO OF PAGES / 23

REFER QUESTIONS TO: DIRECTORATE OF RESEARCH DEVELOPMENT

Presented to the SENATE on the 3rd of November 2010
Presented to the Council on the 1st of April 2011

SUMMARY AND COVERAGE

Walter Sisulu University is a publicly funded institution. The policy has been developed to comply with the Intellectual Property Rights from Publicly Financed Research and Development Act of 2008 and to conform to the National Research and Development Strategy. It provides information on types, ownership and protection in intellectual property disclosure, commercialization and exploitation of any IP generated during the course of WSU supported research. It also addresses its dissemination for public benefit. The IP Policy takes into account the need to create a balance between research excellence and the need to commercialise inventions through research endeavours.

This policy applies to all members of WSU. Coverage: joint ownership of Intellectual Property – where the intellectual property is developed in the course of, or resulting from funded research, such intellectual property vests in WSU

TABLE OF CONTENTS

Content Page No.

Summary and coverage

  1. Preamble 1
  2. Purpose 4
  3. Principles and objectives 4
  4. Principles 4
  5. Objectives 4
  6. Strategy 4
  7. Definitions and explanations 5
  8. Walter Sisulu University 5
  9. Definitions 6
  10. Intellectual Property 6
  11. Patent 6
  12. Licence 6
  13. Assignment 6
  14. Invention 6
  15. Inventors 6
  16. Public domain 6
  17. Moral rights 6
  18. Copyright 7
  19. Full cost sponsored research 7
  20. Sponsored research 7
  21. Economic interest 7
  22. Royalty 7
  23. Commercialisation 7
  24. Indigenous knowledge 7
  25. Research 8
  26. Types of intellectual property 8
  27. Trademark 8
  28. Copyright 8
  29. Ownership of copyrightable works 9
  30. Academic and scholarly works 9
  31. Works for hire, WSU commissioned works and WSU sponsored works 10
  32. Works involving the significant use of WSU resources 10
  33. Works sponsored by external sources 10
  34. Works of students 11
  35. Trade secrets (confidentiality) 11
  36. Ownership and protection of intellectual property 11
  37. Ownership 11
  38. Course materials 12
  39. Software 12
  40. Ownership rights 13
  41. Protection of trademarks of WSU 14
  42. Indigenous knowledge and intellectual property 14
  43. Indigenous knowledge systems 14
  44. New plant varieties 14
  45. Expression of folklore 15
  46. Geographical indication 15
  47. Funding and development of intellectual property 16
  48. Disclosure of Intellectual Property 16
  49. Responsibilities of investors/IP creators 16
  50. Responsibilities of WSU 17
  51. Specific aspects in relation to disclosure 17
  52. Patenting strategy 17
  53. Inventions 17
  54. Dissemination and commercialisation 18
  55. Dissemination 18
  56. Commercialisation 18
  57. Incentives related to intellectual property 18
  58. Staff 18
  59. Students 19
  60. Implementation and management 19
  61. Intellectual property policy implementation 19
  62. WSU intellectual property consultative forum 20
  63. Faculty intellectual property consultative forum 20
  64. Implementation at school and department level 21
  65. Benchmarking of intellectual knowledge and property 21

1.PREAMBLE

Walter Sisulu University (hereafter referred to as WSU) is located in the Eastern Cape, South Africa. Until now the university does not have Intellectual Property Policy (IPP) and recognises the vacuum created by the absence of the policy. It is important that WSU must have its own policy. IP is critical in promoting and protecting creativity to national wealth creation, in recognition of this vacuum the university has decided to develop its own policy. The broad aim is to encourage, protect and reward intellectual property. It aims to facilitate the effective identification, protection, utilization and commercialization of WSU intellectual property for the benefit of WSU and society in general and to ensure that relevant stakeholders are appropriately rewarded.

2.PURPOSE

The purpose of this IPP is to promote, protect, commercialise and reward intellectual property generated at WSU.

3.PRINCIPLES AND OBJECTIVES

3.1PRINCIPLES

  • The primary purpose of the policy is to encourage and entrench quality research towards the generation of intellectual property by providing and enabling environment to researchers.
  • The policy is founded on the principle of internationally accepted guidelines for research and research ethics.
  • It provides for recognition of intellectual property of WSU staff.
  • Design and implement research agenda and policies that will lead to the generation of intellectual property.

3.2OBJECTIVES

This policy outlines the rights and obligations of WSU and its staff in protecting and exploiting any form of IP generated during the course of research. WSU recognizes that intellectual property is a key asset that requires effective and appropriate management and recognizes that this IP policy needs to:

  • Promote research excellence and provide excellence incentives for the development of IP and the commercialization of resulting benefits for the best interest of IP creators, WSU, economy and society.
  • Promote sustainability with respect to capacity development, faculty retention, the attraction of new researchers and academics into the system, research resource mobilization and income generation.
  • Provide enabling environment, guidelines and procedures for the disclosure, protection and application of IP, for example, through patents, copyrights and trademarks,
  • Outline rights in relation to IP ownership with respect to WSU and its staff, Comply with Copyright Act of 1978, Patents Act of 1978 and the Intellectual Property Rights for Publicly Funded Research Development Act of 2008.

3.3STRATEGY

The strategy of the WSU Intellectual Property Policy is to aid in generating intellectual property using available resources in accordance with the WSU guidelines on research policy, research ethics policy, and WSU academic associate policy. Focus on the development of intellectual property shall be aligned with local, regional and national priorities as well as those of global significance.

4DEFINITIONS AND EXPLANATIONS

4.1 WALTER SISULU UNIVERSITY

Walter Sisulu University is an educational entity established in terms of the higher education act. The name Walter Sisulu University is the trademark of the above named institution and shall be used to promote the interests of WSU in the Republic of South Africa and beyond its borders. WSU name includes symbols, logos, emblems and letter heads. These shall only be used to promote interests of the university and not for individual use.

For the purposes of this policy, the terms used are defined as follows:

4.1.1 Members of WSU include:

  • all permanent, temporary, consulting and contract employees of WSU;
  • any persons using WSU facilities under the supervision of WSU personnel, including, but not limited to independent and service contractors, students and visiting lectures;
  • persons assisting WSU with any investigation or research;
  • persons to whom bursaries or funding have been granted by WSU;
  • All non-WSU employees working in WSU-related and supporting units, groups and centres.

4.2DEFINITIONS

4.2.1Intellectual Property- Intellectual Property is defined as any new or useful process, machine or composition of matter, article of manufacture, software, copyrighted work and know-how and information associated with the above. It includes but is restricted to such things as new improved devices, circuit layouts, chemical compounds, drugs, data sets, databases, software, innovative uses of existing inventions and reverse engineering.

4.2.2Patent- patent is the grant of the exclusive rights by the state for invention.

4.2.3Licence – licence is a permission given by the owner of a right (the licensor) to another person (the licensee) allowing that other person to do certain specified things in respect of the subject matter of the right. For example, the owner of the copyright subsisting in a musical work may grant licence to a publishing company allowing it to print and sell copies of the work in the form of music.

4.2.4Assignment – assignment is the transfer of the title in a chose in action. For example, ownership of copyright is transferred by means of an assignment in writing which is signed by or on behalf of the previous owner of the copyright that is the assignor.

4.2.5Invention – a novel and useful idea in relation to processes, machines, manufactures and compositions of matter.

4.2.6Inventors – individuals who are deemed to have made an intellectual contribution to the creation and or development of intellectual property arising from WSU funded or supported research. Inventors do not include persons who have only carried out tasks or supplied materials. It is recognized that inventors can include persons or individuals who may not be primary creators, but persons who may had made a substantial contribution to the development of the intellectual property.

4.2.7Public domain – public refers to all material that is available to the public at large and which may be freely used and exploited without infringing anyone’s intellectual property rights.

4.2.8Moral Rights – Moral Rights are rights that the author of a work has independent of the rights of the copyright owner.

4.2.9Copyright – Copyright is a property right that subsists in certain specified types of works. Copyright is a set of laws that governs the creation, reproduction, and distribution of original works that can be perceived. Examples of the works in which copyright subsists are original literary works, films and sound recordings.

4.2.10Full Cost Sponsored Research – research, training and instructional projects in which the full cost of undertaking the research and development is covered by the sponsor.

4.2.11Sponsored Research – research, training and instructional projects involving funds, materials or other compensation from outside sources, including private sector companies, public entities, international research organizations, educational institutions and international funding or donor organizations, under agreements between the sponsoring agent and WSU.

4.2.12Economic Interest – includes a member’s interest in obtaining a shareholding, management positions, board memberships and other fiduciary relationships.

4.2.13Royalty- royalty is payment mechanism on percentage of the income derived from sales of works or articles subject to an intellectual property right. This is a common method of paying for a license to exploit and intellectual property right.

4.2.14Commercialisation – the process of gaining financial and social benefit from the intellectual property generated by members of WSU. It includes developing, managing and protecting the commercial value of the intellectual property and research and in most instances this involves the creation of linkages with industry and the creation of commercial enterprises created by agreements with WSU.

4.2.15Indigenous Knowledge/Traditional Knowledge Innovations– indigenous knowledge or traditional knowledge refers to the knowledge, innovations and practices of indigenous communities. Traditional knowledge comprises both traditional knowledge and know-how as well as expressions of folklore. Traditional knowledge has intrinsic social, cultural, spiritual, economic, scientific, intellectual and educational value, Traditional cultures and knowledge systems are not static, but frameworks of ongoing innovation and creativity that benefit indigenous peoples, traditional communities and other cultural groups as well all humanity. Traditional knowledge is passed orally from one generation to generation. It is developed from experience over the centuries and adapted to the local culture and environment. Indigenous Knowledge/ Traditional Knowledge tends to be collectively owned and normally takes the form of stories, songs, folklore, proverbs, beliefs, cultural values, rituals, language, community laws and agricultural practices, including the development of plant species and animal breeds.

4.2.16Research - the creation, preservation, accumulation and improvement of knowledge by means of scientific investigations and methods in different fields of the academic world.

4.3TYPES OF INTELLECTUAL PROPERTY

4.3.1Trademark

A trademark is a distinctive sign. The sign identifies and distinguishes certain goods or services as those produced or provided by a specific person or entity as opposed to some other person or entity. A trademark helps consumers to identify and to purchase a product or service because its nature and quality, indicated by its unique trademark, meets their needs. The South African Trademark Act protects trademarks for goods and trademarks for services.

A trademark provides protection to the owner of the mark. It does so by giving the trademark owner the exclusive right to use the mark or sign on the owner’s products. This serves two main purposes: to identify and distinguish goods or services; to authorize another to use it in return for payment under provisions that relate to registered users under the Trademarks Act. The Act provides for protection for a period of 7 years. This period may be renewed from time to time.

Trademark protection is enforced by the courts. Courts have the power to stop trademark infringement by way of injunctions or by ordering the destruction of infringing products. Trademark protection promotes initiative and enterprise by rewarding the owners with recognition and financial profit. It thwarts the efforts of unfair competitors such as counterfeits and imitation goods that use similar distinctive signs to market inferior or different products or services.

For WSU, a trademark will be important as it will enable the University to strengthen its income-generating capacity, through sales of goods and services produced by it.

4.3.2Copyright

Copyright describes rights given to creators for their literary and artistic works or, computer programmes, compilations, audiovisual works, sound recordings, broadcast, capable programmes, typographical arrangements of published editions of literary works, including rights of performing artists in their performances, the right of producers of phonograms in their phonograms.

Works covered by copyright include literary novels, poems, plays, dramatic works, computer programmes, database, films, musical compositions and choreography, artistic works such as paintings, drawings, photographs, sculpture, architecture, maps, multimedia creations, and technical drawings.

Copyrights in South Africa are protected by the Copyright Act. The creator of copyrights holds the exclusive right to use or authorize others to use the work for a period of 50 years generally. For original works the period is 50 years plus the life of the author. The creator of a work can prohibit or authorize: (i) its reproduction in various forms, such as printed publication or sound recording; (ii) its performance in public, in the form of plays, dramatic or musical works; (iii) its recording, for example in the form of compact discs, CD, DVD, cassettes, or videotapes; (iv) its broadcasting by radio, cable, or satellite; (v) its translation into other languages, or its adaption, into a novel, screen play or a movie; and (vi) its availability for access such as through a website or the internet.

Many creative works protected by copyright require distribution, communication and financial investment for their dissemination (for example, publications and computer programmes). Accordingly, WSU may need to sell or license the rights to individuals or entities that are best able to market the copyright works at a fee. Copyright protection also includes moral rights, which involve the right to claim authorship of a work, and the right to oppose changes to it that could harm the reputation of WSU. WSU may wish to oppose the use of copyright in circumstances that WSU would deem such work to amount to derogatory treatment of works and to distortion or mutilation of the work or is otherwise prejudicial to the honour or reputation of the author or creator of works (e.g. to promote a racist or sexist agenda or immorality).

In the event of illegal production or possession of goods protected by WSU, WSU may obtain court orders to stop such activities, as well as seek damages for loss of financial rewards and recognition including court orders granting the University power to destroy any infringing works.

4.3.3Ownership of copyrightable works

WSU recognises and supports the right of any individual within the University community to create original works. It seeks to encourage the discovery and development of new and derivative works and dissemination of new knowledge consistent with its mission and vision. It realizes that the development of new works and the rights, benefits, and responsibilities in these works arises from a variety of endeavours. It further recognises and supports the concept that ownership and benefit from IP may belong to various contributors and will work to develop practices that provide appropriate benefits to all contributors.

Copyrightable works will be produced at WSU in a variety of situations. These situations will impact ownership and interests in the ownership of the work produced. The following IP categories may be considered in establishing rights and interests in ownership in copyrightable works.

4.3.4Academic and scholarly works

These are works which reflect research and/or creativity within the University. They are considered as evidence of professional advancement or accomplishment. Sometimes referred to as ‘traditional works’, they typically include scholarly and research publications, journal articles, books, monographs, textbooks, plays, poems, music compositions, and other works of art. They do not however include works commissioned or sponsored by the University.

These works are considered to be the property of the author(s). The authors therefore hold all copyright ownership in them. They also assume all responsibility for compliance with copyright law, though for some of these traditional works documentation of copyright compliance assurance may be requested by the academic or administrative unit of the author(s).

However, where the development or production of these works involves the significant use of WSU resources (i.e. resources not typically available to employees for the development or production of traditional works) ownership of the copyright will be jointly owned by the author(s) and WSU.

4.3.5Works for hire, WSU-commissioned works and WSU-sponsored works

For the works in these categories, the right to reproduce, distribute, make derivative works, and conduct public performances or displays of the work will be assigned to WSU unless it waives this right in a written agreement with the author(s).

Works for hire are works prepared for WSU as part of an employee’s typical position duties. WSU-commissioned works on the other hand are written materials in any format and works of art developed or produced by an employee with financial help of WSU and/or with released time specifically assigned to the work. WSU-sponsored works are academic, institutional, and scholarly works developed or produced by an employee with financial help of WSU and/or with released time specifically assigned to the work. Such works typically include syllabi, course study guides, course packs, and supplemental instructional materials in any format.

4.3.6Works involving the significant use of WSU resources

WSU will have an interest copyright ownership for works developed by employees who use significant WSU resources in the design, development, and/or production of the materials.

4.3.7Works sponsored by external sources

IP rights for works developed with the funds provided by external sponsors are typically specified in the grant agreements/contracts and/or other documents. In the absence of any such agreement and in cases where it is clear that IP may develop as part of the work of the sponsored project, the WSU Intellectual Property Officer will prepare an IP agreement for signature by all parties.