Tag Archives: patent

Draft Bill for IPR in Publicly Funded Research (still open for comment) – a publishing perspective

Those academics and researchers who have been away on vacation might not know that a Draft Bill on IPR in Publicly Funded Research was released for comment
a few weeks ago. The deadline for comment was very short – some ten days in the middle of the holidays. The contents of the Bill are dire – I have not spoken to anyone who is happy with what it says. For those newly returned to the treadmill, I posted blogs on the Bill on the 5
and 13th of July. The blog of 12 July describes some of the provisions of the Bill. Basically, it sets up a system in which any research that has patent potential must be submitted to the university IPR Office and all intellectual property rights (including all copyrights connected with the invention) are ceded to the university. If the university does not want to take a patent on the
research, then the rights go to the government. Worse, the Bill requires any research that might conceivably at some stage, be patentable, to be treated the same way. More, it requires all publications (which, the lawyers tell me, could include blogs and websites as well as formal publications) to be screened by the university IPR office before they can be published, just i case they might reveal something patentable. And then, if an employee of the university fails to report a piece of research that is patentable, she is subject to disciplinary procedures (and employees include students) But there is even more than this – go and read it.

At the very last moment, on the closing day for comment on this Bill, the deadline for comment was extended until 20 August. Not much consolation for colleagues who has worked through the night and lost two weekends working on replies, but a good thing nevertheless. The Bill has very serious implications for any South African researchers so, now that the university term has started, I hope that a greater number of you will become aware of it and let your universities – and the DST – know how this might affect your research.

As a publisher, I am concerned that this Bill, if enacted, could impact very negatively on scholarly publication. I find it hard to imagine how any university could cope with screening every publication before it can be submitted to a publisher or conference organiser. And, knowing how we all work to tight deadlines, I think that the need to write in several weeks of extra time before being able to submit any journal or conference paper could be a nightmare. Then, if the lawyers are right and the definition of ‘publication’ includes blogs and discussion forums, then even informal research communications would have to be screened. The potential costs are substantial – every publication would have to be read by an expert who would be able to discern if there is a potential patent hidden in the publication concerned. And screening would include not only the publications that are ultimately accepted, but also the very large number that are rejected. The university would have to become, at great expense, a very Big Brother, and all spontaneity in communication between researchers would be stifled. In a world in which collaborative research has become a necessity, this would be a serious backward drag on the very publication output that we are trying to expand.

Here is a comment from Dr Alma Swan, of Key Perspectives, a highly regarded consultancy in scholarly communications with a long list of very prominent clients, from the UK government and the European Union to the Public Library of Science and the Nature Publishing Group. She holds posts at Warwick Business School, and in the School of Electronics & Computer Science and the School of Management at the University of Southampton. Her comments are acerbic – she says that she was
having an irritable day, but I think she was entitled to this, given the content of this Bill:

Far from helping SA science and technology this Bill has the potential to slow it to walking pace while every article is checked for patent potential. How truly bizarre. Still, good news for South Africa’s competitors.

If I were an (international) funder I would steer clear of funding any SA research under this set of conditions. It will be a slowdown for OA, though presumably just a slowdown: it will hold up deposit and publication while each article is cleared. .The primary losers will be SA’s scientists, whose work gets held up when it is ready for publication – could mean the difference between being the first to publish on something or losing the race to someone else. At the very least, delaying publication means delayed impact, which is important to individuals (perhaps seeking jobs, tenure, etc) and certainly for the country. It seems a very odd development.

Given Alma’s status in the international world of scholarly communication, I would take this comment seriously.

Intellectual Property in Publicly Funded Research – what the Bill says

The Department of Science and Technology has, as I noted in my last blog, published a Draft Bill on IP in Publicly Funded Research for comment – and comments have to be submitted by 18 July which is next Wednesday. This is causing a scramble among those of us who have an interest in IP issues and particularly those of us who support commons and non-proprietary approaches to knowledge dissemination, especially for developing countries.

First, what the Bill says. What I offer here is a quick and crude summary but Andrew Rens will let us have a human-readable version very soon. I will set out the provisions of the Bill – as I understand them – in this blog and will then go one to reflect on various aspects of this legislation in further blogs. The issues are complex, the time for discussion and submissions very limited, so any responses, arguments and reflections would be very welcome.

Briefly, the Draft Bill requires all publicly funded institutions (which includes all universities) to have an IP Management Office and provides for the creation of a National IP Management Office. (Because my interest is in the universities, this is how I will frame my discussion from here on.)

The Bill provides for the IP in all patentable inventions to reside in the university. If the university does not want to patent a particular invention, then the right passes to the National IP Office. Only if the national office does not want to patent an invention do the rights pass back to the researcher concerned. The Bill also provides for the sharing of rewards in the patented invention.

In other words, it appears to be modeled on the Bayh-Dole Act in the US. But there are also important differences. One is that the SA Bill is more stringent and less flexible. There seem to be fewer rights for the inventor and the Bill extends beyond the protection of patents to ‘copyrights in any work related to patentable inventions’ which also become the IP of the university. This seems to me, as a publisher, to be very wide, as it looks as if the university would have IP and would therefore control for publication purposes a very large number of potential publications. Would a researcher be able to publish, without university permission, a conference paper or journal article on her research even after the patent is registered?

The next move is that the legislation also covers ‘the protection of basic scientific research results that are capable of forming the basis of a patentable invention but are not yet capable of protection under the Patents Act..’ The Minster can extend these categories further by notice in the Government Gazette. In other words, this is a very wide-ranging definition of the IP that will become the property of the university or the State. Because these definitions are vague, it looks as if just about everything could fall under these provisions.

All employees will be deemed to have assigned their IP as defined by the Bill. Employees are defined as including students undertaking research in the institution. The universities and their employees (and students) seem to be obliged to exploit commercially any research that is capable of commercialisation. If they do not, they can be subject to disciplinary action. Any potential IP from research carried out in the university has to be reported to the IP office within 30 days of identification by the researcher.

Then – and this startles me as a publisher – the university IP office has to screen ‘all publications from the institution for potential IP that through publication might lose protection in terms of the Patent Act.’ All publications? I ask. That would mean journal articles, conference papers, chapters in books, research reports, etc, before they are published. Because a ‘publication’ is not defined, it probably means blogs, website, online discussion forums as well. In other words, researchers are constrained from communication until their work has been vetted by the IP office to ensure that they are not revealing something about a potential patent. I cannot imagine this being carried out unless the university hires teams of specialist people to scan all publications at pre-publication stage. This would surely have s seriously chilling effect on publication and this is turn would impact negatively on the revenues that the universities get from their publication subsidies, which are an important revenue stream for them.

It is the institution, in consultation with the national IP office, that decides the licence conditions for an invention, not the researcher concerned. Exclusive licensing is preferred.

Where research is co-financed, there are very specific provisions as to how the IP for these funded research projects shall be managed. It appears that funders would not be able to stipulate that IP should be exploited any other way other than commercially, through patenting. The funder can only become a co-owner or IP holder if they are in a position to commercialise the the IP. This section does not appear to provide for non-profit bodies and I question whether this is not going to be a serious disincentive for donor funders who currently invest in South African research.

It also looks as if, given the copyright provisions in this Bill, that stipulations and mandates from funders for Open Access dissemination would be seriously constrained.

These are serious issues, but before we go ballistic and start taking all this apart, we need to step back and consider why the very good department enacting this legislation is considering such draconian provisions. That is another story – – – next thrilling installment in my next blog.