WATER RESEARCH COMMISSION INTELLECTUAL PROPERTY POLICY ABSTRACT

Transcription

1 WATER RESEARCH COMMISSION INTELLECTUAL PROPERTY POLICY ABSTRACT This Intellectual Property Policy aims to encourage research and innovation, clarify ownership of intellectual property rights, create opportunities for public use of WRC innovations, and to provide for the equitable distribution of financial rewards and other benefits derived from intellectual property. WRC has established this Intellectual Property Policy ("Policy") for the management of intellectual property created within the scope of WRC-funded projects to: Promote, preserve, encourage and aid scientific investigation and research; Provide organizational structures and procedures through which inventions and research results made in the scope of WRCfunded projects may be freely placed in the public domain, either through the channels of commerce, or by other means; Establish standards for determining the rights and obligations of the WRC, Contractors and Researchers (e.g., inventors, developers, authors) with respect to intellectual property made or created in the course of WRC-funded projects; Encourage, assist and provide mutually beneficial rewards to the WRC, Contractors and Researchers for the assignment of intellectual property rights under this Policy; Ensure compliance with applicable laws, regulations and public policy; and Enable the WRC to award equitable research funding at all levels of research.

2 INTELLECTUAL PROPERTY POLICY 1 DEFINITIONS 1.1 Certain terms are used in this Policy with a specific meaning, as defined in this paragraph. These definitions do not necessarily conform to customary usage. 1.2 As used in this Policy, the feminine gender includes the masculine gender, singular or plural, wherever appropriate. 1.3 In this Policy, unless the context indicates otherwise: Background Intellectual Property means intellectual property rights belonging to a Contractor, a Researcher, and/or a third party associated with a WRC-funded Project, that existed prior to the commencement of the relevant WRC-funded Project. "Contractor" means an entity or a natural person whose proposal to undertake appropriate research and investment in water-centred knowledge and innovation has been accepted within the scope of a WRCfunded Project. Direct Expenses" means the costs associated with the protection and licensing of Intellectual Property. Such costs do not include the salaries or other overhead costs of the Contractor and/or Researcher. Fundamental Mission of the WRC is to facilitate research and investment in water-centred innovation and the generation and dissemination of knowledge for the public good. "Intellectual Property" means any and all rights vesting in technical information, any invention, processes, information and/or know-how, improvements, copyrightable works, designs and trade secrets, including, but not limited to, records of confidential information generated or maintained, data, test results, bibliographies, research findings, organisms, cells, DNA sequences and other biological materials whether in a written or electronic form, raw or derived, in the form of text, multimedia, computer programs, spreadsheets, formatted fields in records, forms within files, databases, graphics, digital images, compositions, and executions of processes, developed by Researchers and/or Contractors within the scope of WRC-funded Projects. National Water Security means issues related to securing, preserving or improving national water resources, basic water supply, basic sanitation, irrigation and other water-related quality of life issues which are deemed to be in the public interest. "Researcher" means faculty, staff, and other persons employed or contracted by the Contractor, or the Contractor herself, whether full- or part-time; and/or any other persons, including a student, a student employee, a graduate student, a post-doctoral fellow, and a nonemployee (including visiting faculty, affiliate and adjunct faculty, industrial personnel, fellow, etc.) who participates in the creation or generation of applicable Intellectual Property and/or knowledge in the scope of a WRC-funded Project. 2

3 WRC means a statutory entity with legal personality established in terms of Section 2 of the Water Research Act No. 34 of 1971, as amended. WRC-funded Projects means projects with well-defined outcomes related to research and investment in water-centred innovation which are funded and awarded by the WRC. 2 BACKGROUND 2.1 The Fundamental Mission of the WRC is to facilitate research and investment in water-centred innovation and the generation and dissemination of knowledge for the advancement of National Water Security. In the pursuit of these missions, research results, scientific advances and new creations should be disseminated to the public and may be subject to, or eligible for, intellectual property protection. 2.2 It is the policy of WRC to publish research results and to foster the use of inventions, discoveries, designs and other works made or created within the scope of WRC-funded Projects for the common good. In many cases, publication of research results, research reports and other scholarly works will be sufficient to serve this purpose. In other cases, the WRC may serve the common good by taking formal steps necessary to secure protection of the WRC s Intellectual Property. Commerce and industry may then be encouraged to invest their resources to develop and distribute products and processes for public use. 2.3 The stewardship of such Intellectual Property is consistent with the research and service missions of the WRC and it is viewed as an important responsibility of both the WRC and Contractors. An interface is needed to enhance technology transfer and the WRC will provide mechanisms for that function. 2.4 This document sets forth WRC Policy concerning the assignment, protection and exploitation of Intellectual Property. 2.5 The aim of this Policy is to give recognition to individual Researchers, to encourage the prompt and open dissemination of research results emanating from WRC-funded Projects, and to serve the public good by making WRC technology available to industry and others for commercial exploitation. 3 GOALS 3.1 This Policy reflects the following goals: to create a WRC environment that encourages the generation and dissemination of new knowledge by Researchers; to motivate Researchers to develop, record and report Intellectual Property by providing appropriate recognition, financial rewards and administrative assistance to them; 3

4 3.1.3 to ensure that the financial return from the development of Intellectual Property does not distort decisions and operations of the WRC in a manner contrary to the Fundamental Mission of the WRC, or contrary to National Water Security; to ensure that incentives to pursue the financial rewards together are consistent with the expressed goals of this Policy; and to ensure that the distribution of those rewards should reflect, insofar as possible, the creative contributions of Researchers, the resources contributed by the Contractor, the resources contributed by the Researcher and the contributions of the WRC in developing Intellectual Property. 3.2 The WRC wishes to encourage negotiated and separate agreements for the commercial exploitation of Intellectual Property, as it is difficult to meaningfully assess outcomes, risks, resources and potential rewards in the initial agreement in terms of which a WRC-funded Project is awarded. 4 APPLICATION 4.1 This Policy applies to all staff and other persons employed by the WRC. 4.2 This Policy applies to Contractors and Researchers who participate in WRC-funded Projects. 4.3 It is the responsibility of Contractors and Researchers to resolve any conflicts between this Policy and other contractual obligations prior to participating in WRC-funded Projects. 4.4 This Policy applies to Intellectual Property disclosed to the WRC after the effective date of this Policy. 5 INTELLECTUAL PROPERTY 5.1 The WRC shall be the owner and assignee of all Intellectual Property created and/or made within the scope of WRC-funded Projects, to enable the WRC to fulfil its Fundamental Mission. 5.2 The Contractor shall disclose all Background Intellectual Property relevant to the specific WRC-funded Project vesting in itself, in Researchers or any other third party, as well as any preemptive or other existing rights, which may be relevant to the specific WRC-funded Project. 5.3 The Contractor is primarily responsible for identifying and reporting applicable Intellectual Property made and/or created in the scope of a WRC-funded Project and it shall promptly notify the WRC in writing thereof. 5.4 The Contractor and Researchers shall assist and execute all documents necessary for the assignment of the title of such 4

5 Intellectual Property to the WRC, unless the parties have signed an agreement to the contrary. 5.5 The Contractor and Researchers shall deposit computer data and/or a complete machine-readable source code of computer programs that vest in the WRC, at the reasonable expense of the WRC and in accordance with a written request by the WRC. 5.6 The minimum deposit requirements for computer programs and databases and related issues will be determined in a written agreement between the parties. 5.7 The WRC and all successors in title shall give Researchers due recognition as the inventors, originators, authors or designers of works. 5.8 Researchers shall retain the right to pursue related research and creative activities, to determine methodologies, draw conclusions, and to disseminate information, except to the extent that the Researcher is required to do otherwise by considerations affecting the effective and proper protection of the WRC s Intellectual Property. 5.9 Should the WRC decide not take the necessary formal steps to protect the Intellectual Property made and/or created in the scope of a WRC-funded Project, the WRC may re-assign such Intellectual Property to the Contractor, provided the reassignment is deemed to be in the public interest. 6 TECHNOLOGY TRANSFER & COMMERCIAL EXPLOITATION OF INTELLECTUAL PROPERTY 6.1 The WRC encourages agreements with the Contractor and third parties for the development, use, dissemination, and commercialisation of the WRC s Intellectual Property. 6.2 Should any one of the parties deem the Intellectual Property generated and/or created by a Researcher within the scope of a WRC-funded Project, including Intellectual Property disclosed in terms of paragraph 5.3 above, to be commercially exploitable, or in need of further development, such party shall notify the other party, promptly, in writing, of this potential for commercial exploitation or further development of the Intellectual property. 6.3 The parties shall collaborate in the protection, commercial exploitation or further development of such Intellectual Property. The parties shall enter into a separately negotiated written agreement defining the relationship, roles and responsibilities of the WRC and the Contractor in said collaboration. 6.4 The WRC may retain a royalty-free license for non-commercial research and dissemination of the Intellectual Property. 6.5 The WRC shall exercise its walk-in right where the execution of agreements in terms of this paragraph poses a threat to National Water Security or to the Fundamental Mission of the WRC. 6.6 Any agreement to commercially exploit the WRC's Intellectual Property shall be subject to this Policy and shall be in conformity 5

6 with any Benefit-Sharing Policy the WRC and/or the Contractor may have. 6.7 Agreements relating to the development and/or commercialisation of Intellectual Property may provide that the Contractor or other entity bear the costs of obtaining protection for Intellectual Property, including statutory protection in foreign jurisdictions. 6.8 The Researcher shall provide such assistance as may be deemed to be necessary throughout the technology transfer process. 6.9 The Researcher shall arrange for the retention of all records and documents that are necessary for the protection of the WRC s interest in the Intellectual Property Researchers record retention practices shall be in accordance with the Contractor s policy governing research best practices and procedures The Researchers shall receive a share of all proceeds generated by the commercialisation of the Intellectual Property after the Contractor has recovered Direct Expenses. The Researchers share shall be in line with the Contractor s Benefit-sharing Policy Should either of the parties decide not to participate in said collaboration, it shall inform the other party of this decision within ninety (90) days of the receipt of the notification referred to in paragraph 6.2 above. It shall then assign its rights in the Intellectual Property to the other party Notwithstanding the provisions of paragraph 6.12, the WRC shall assign its rights in the Intellectual Property to the Contractor, provided that the assignment is deemed to be in the public interest. 7 DISCLOSURE 7.1 The WRC, the Contractor and Researchers will work together to facilitate both scholarly disclosures and the appropriate protection of Intellectual Property. 7.2 Premature or inappropriate disclosure may defeat legal protection of Intellectual Property. 7.3 In terms of proper disclosure procedures the Researchers and/or Contractor must obtain prior written permission from the WRC for any presentation, publication or release of research results. 7.4 Nothing in this Policy shall be construed as affecting the rights of a Researcher to publish research results, except that the Researcher must agree to observe a delay in publication if the WRC so requests and if such a delay is necessary to permit the WRC to secure protection for the Intellectual Property. 7.5 Delays in publication required by the WRC, shall, as a general rule, not exceed six (6) months from the initial disclosure of the Intellectual Property to the WRC in terms of paragraph 5.3 above. 7.6 The WRC shall take appropriate steps to publish summary descriptions of research reports and scholarly disclosures on a regular basis. 6

7 7.7 All disclosure material and research reports provided to the WRC will be placed in the WRC Library and made available to the public at large. 7.8 The WRC will also provide the general public with copies of such scholarly disclosures and research reports on a cost-recovery basis. 8 IMPLEMENTATION 8.1 Primary responsibility for the protection and management of intellectual property resides with the CEO of the WRC in terms of this Policy. 8.2 This Policy may be implemented or supplemented in any way consistent with its terms and those of other WRC policies. 8.3 It is the responsibility of the Contractor to adopt and implement a policy governing its research best practices and procedures. 8.4 It is the responsibility of the Contractor to adopt and implement a Benefit-sharing Policy or similar policy governing the sharing of benefits of the commercialisation of the Intellectual Property with the individual Researchers. 8.5 Contractors and Researchers have a responsibility to: adhere to the principles embodied in this Policy; sign, when so requested by the WRC, the WRC's Intellectual Property Policy Acknowledgement Form; create, retain, and use Intellectual Property according to the applicable South African intellectual property laws and WRC policies; disclose promptly in writing Intellectual Property created within the scope of a WRC-funded Project and assign title to such Intellectual Property to the WRC or its designee to enable the WRC to satisfy the terms of any applicable funding or contractual arrangement; and co-operate with the WRC in securing and protecting the WRC's Intellectual Property, including cooperation in obtaining patent, copyright, or other suitable protection for such Intellectual Property and in legal actions taken in response to infringement. 8.6 It is the responsibility of the Contractor to inform each person whose rights in Intellectual Property are limited by this Policy of such limitations in writing and in advance of the commencement of a WRC-funded Project. 8.7 The Contractor and/or Researcher have the responsibility to properly consider, disclose and manage any possible conflicts of interest arising from agreements for WRC-funded Projects and other agreements. The Contractor should promptly disclose such conflict of interest in full to the parties concerned and resolve such conflicts before entering into an agreement with the WRC to undertake a WRC-funded Project. 7

8 8.8 The CEO of the WRC shall adopt procedures to implement this Policy. 9 WRC ADMINISTRATION OF POLICY 9.1 The WRC shall conduct an annual due-diligence audit of all Intellectual Property generated by WRC-funded projects. 9.2 The WRC shall provide the Board of the WRC with an annual report on Intellectual Property, including information on Intellectual Property disclosed, secured, licences granted or rights transferred and revenue derived from the exploitation of the Intellectual Property. 10 EFFECT This policy came into effect on 7 October ACCOUNTABLE DEPARTMENT Questions regarding the interpretation of this Policy, intellectual property and technology transfer should be directed to: Intellectual Property Manager Mr Lawrence Baloyi Water Research Commission Private Bag X03 Gezina, Pretoria 0031 South Africa Tel : Direct : Fax : lawrenceb@wrc.org.za