Tag Archives: Intellectual Property

IP in Publicly Funded Research Bill – does the cure match the disease?

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The first question that arises in relation to this piece of legislation is why it has been drafted – what perceived need does it fill? And why the need to draft so widely – and even inventions that might conceivably become patents some day?

As far as I can establish, there are two separate areas that the government feels needs addressing. One is the perception that the universities are not performing well enough in delivering value for the money that is being invested in public research in the country. The other is that South African knowledge resources and intellectual property – as is common across the developing world – risk being pillaged by patent-seekers from the global North, particularly from the USA. In the later view, unless we protect ourselves with a strong IP regime, we will risk losing the exploitation of our intellectual capital to more powerful
Northern pirates and raiders.

As South Africa’s National Research and Development Strategy (2002) said: ‘These are valid concerns. More South African research needs to be more effectively disseminated and exploited for the national benefit. And the risk of predatory raids by US bounty hunters is real enough – the Rooibos case is the most high-profile recent case in this regard and there are genuine concerns about how best to protect traditional knowledge from appropriation. The problem is in the solution being proposed, which, I would suggest, is in fact contrary to some of the DST’s most enlightened – and most central – policy-making and
might well be the wrong cure for the disease.

I was concerned to see in an ITWeb article that Matlu Mabokano, manager of hydrogen and energy at the Department of Science and Technology (DST), is quoted as saying that the Bill is heading for Parliament this week even as comment is being sought. He is quoted as being dismissive of the fact that there have not been many comments submitted yet, accusing South Africans of being chronic last-minuter responders. This seems an opinion based on a blithe assumption that the issues in the Bill are not problematic and are simple and straightforward to respond to. This is not the case -the issues at stake are very complex and it has taken the Australian government, for example 800 pages to summarise the outcome of its consultation on the same issues in the Productivity Commission Report published two months ago. Moreover, as the DST itself wrote in the National Strategy for Science and Technology: ‘International thinking on legislation is as fluid and fast-moving as the new technologies themselves’. Yet Mabokano’s apparent assumption of simplicity and obviousness is not an uncommon view among those who propound proprietary models of IP protection. The Copy/South Dossier, which reviews the global IP regime from the perspective of developing countries, argues that the ‘dominant discourse around intellectual property – whether legal or sociological – starts from some largely unexamined assumptions’.

The assumption that a strong IP regime on its own fosters development and economic growth is one that is being increasingly challenged worldwide. Policy-making needs to be forward-thinking. As NEPAD argues in its discussion document on science and technology indicators, policy-makers need to be able ‘to discern, based on their expert knowledge, the future trajectories of the subject and the interventions which might improve its development’. The future does not look as if it will be one of proprietary IP systems only.

The DST’s policy on Science and Technology puts the role of technology and the changes being wrought by ICT at the heart of its proposals for development. As the White Paper on Science and Technology says:

The world is in the throes of a revolution that will change forever the way we live, work, play, organise our societies and ultimately define ourselves … The ability to maximise the use of information is now considered to be the single most important factor in defining the competitiveness of countries as well as their ability to empower their citizens through enhanced access to information.

This perspective seems to be missing from the Draft Bill. Worse, in fact the White Paper’s policy perspective, which stresses access and the maximisation of the use of information, risks being marginalised in a vision in this Bill which seeks to subordinate a very wide range of information management to the proprietorial and necessarily secretive
world of patents. South Africa’s Science and Technology Policy is also firmly founded on the need for research to make a public
development contribution: ‘A South African vision of the information society should seek to ensure that the advantages offered by the information revolution reach down to every level of society and achieve as best a balance between individuals and social groups, communities and societies as is practically possible.’ Science and Technology, it argues, must address the real needs of South Africa as for social and economic development. Patents on their own do not achieve this. In fact it is widely recognised that commercialising the research system by focusing on patents alone will advantage inventions that appeal to the wealthy, rather than those that serve the needs of the poor. A patent-driven system of research evaluation, on its own, would tend
to marginalise poorer communities and their needs.

At the very least, a forward-looking Bill would need to address and incorporate the need for non-proprietary methods of production, as this is now mainstream in world thinking and policy-making.

Governments across the world, including the UK, the USA, the EU, and Australia, have convened commissions to discuss and explore this issue. Ironically, South Africa is part of this movement and is a signatory of the OECD Declaration on Access to Research Data from Public Funding , something that would be rendered problematic by this Bill.

Something that the non-proprietary, commons approach is doing in the international arena is re-positioning the developing countries. A symptom is that the Development Agenda being driven by Brazil and Argentina has very recently been accepted on the WIPO Agenda. As Yochai Benkler charted in a complex and tightly-argued paper at the iCommons Summit in Dubrovnik last month, this but one symptom of the fact that we are at one of those turning points where a dominant system – the ‘strong’
IP regime – is being challenged across the globe by a radical re-thinking of how best to achieve the very goals that this Bill
seeks to promote. And, as he argued, this is now a social movement, in the beginning stages, which is moving developing nations from the periphery to the centre of international affairs, a world in which human development and justice are the core drivers, not the specifics of IP law and copyright.

One strong thread in the critiques of the global IP system is that patents in particular are damaging to developing and transitional economies. As Benkler puts it: ‘The above-marginal-cost prices paid in …. poorer countries [as a result of patents] are purely regressive redistribution. The morality of this redistribution from the world’s poor to the world’s rich has never been confronted or defended in the European or American public spheres. It simply goes unnoticed.’ And yes, there is value in effective patents and yes, developing countries have managed to patent successfully themselves. And so my argument is not, in addressing this Bill, that it needs to be thrown out in favour of non-proprietary and open methods of dissemination. It is that, in formulating the Bill as widely as they have, the drafters have sidelined a number of important questions that are being debated around the world as we speak. As the Australian government put it in the Productivity Commission Report:

Universities’ core role remains the provision of teaching and the generation of high quality, openly disseminated, basic research. Even where universities undertake research that has practical applications, it is the transfer, diffusion and utilisation of such knowledge and technology that matters in terms of community well-being. Commercialisation is just one way of achieving this. Productivity Commission
2007: xiii – my emphasis)

In other words, there needs to be more flexibility in the provisions of this Bill for the commercialisation of research results and space for non-proprietary collaborative approaches that could advantage the poorest sections of our community at the same time as we grow our competitiveness in global business.

Intellectual Property in Publicly Funded Research – what the Bill says

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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.

A new draft bill on IP rights in publicly funded research

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We have known for a while that there was a bill in the offing on the management of IP in publicly funded research and this Draft Bill is now available for perusal on the website of the Parliamentary Monitoring Group. The Deputy Minister of Science and
Technology, when he visited CET, said that there would be a period for comment on the Bill and, as this draft Bill does affect
universities and researchers in universities, I am providing a heads-up for those of you who have a particular interest in the
management and ownership of the IP in the research that you carry out.

I was half expecting a Bill on the rights of public access to publicly funded research, along the lines of discussions in the UK,
the USA and the EU, among others, for access to research publication. South Africa is a signatory of the OECD
Declaration on Access to Knowledge from Publicly Funded Research, so probably needs to enact provisions of this kind at some stage.

This Draft Bill is not along those lines at all. It appears to be about institutional and government control of the commericalisation of research and provisions for any research that is potentially patentable. I have not had time to peruse it properly nor think through its implications – these in any event probably need to be teased out by an IP lawyer. However, it would be interesting to get reactions from researchers at UCT and other universities as to how they perceive this Draft Bill and how it might affect them.

The Australian government’s Productivity Commission has recently undertaken a major exercise on returns from public investment in research and there is much discussion in the 800-odd pages of its report, issued in March 2007, about the kind of issues faced in this Draft Bill. From my perspective, as someone who deals in copyrights – the dissemination of research – rather than in patents, the following statement struck a chord:

Ultimately, in terms of community well being, it is the transfer, diffusion and utilisation of knowledge and technology
that matters. The social return from public investment in R&D depends on: whether knowledge and technology are transferred out of universities (that is, whether they see the light of day); how fast and widely the knowledge diffuses among potential users; whether the knowledge and technology is developed into some form of practical application (that is, whether it is taken up in some form or other that is welfare enhancing); and how widely the resulting innovation is utilised. There
are multiple pathways for achieving these benefits (p.280).

The State of the Nation 2: Clashing paradigms in South African research publication policy

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When I set out to explore the policy framework for scholarly publishing in South Africa, I did so with a burning question that I have carried over from my publishing career.Given the scenario that I sketched in my last posting, in which African voices are largely silenced by the conventions of global scholarly publication, what I would be looking for would be national policies that would grow the output and effective dissemination of African research in and from Africa, for African development, in the most appropriate media and formats. A publisher’s approach would be to look at the goals articulated in national higher education and research policy and then ask whether policy for research dissemination is encouraging publications that support those goals.

What I found was that there is strange clash of paradigms within the different policy documents and, more starkly, between the policies of different government departments.Before I get too critical of these illogicalities, I need to stress that South African policy is not unusual in this regard. Worldwide,discussion of research dissemination is a blind spot. As the authors of an Australian government report on research communication costs put it:’despite billions of dollars being spent by governments on R&D every year, relatively little policy attention has yet been paid to the dissemination of the results of that research through scientific and scholarly publishing’.

Effective dissemination of higher education research and the availability of that research knowledge to the country that funds it – particularly in Africa – can be quite literally of life and death importance. Just think of the need for rapid responses to the AIDS pandemic, continually informed by the latest research findings. Yet when the question of publication and effective dissemination arises in the policy documents, it tends to be in terms of a generally unchallenged set of presumptions about what constitutes effective research dissemination – articles in accredited scholarly journals and registered patents. And, while universities might spend large sums of money registering patents,there is a tacit assumption that publication is not something that universities pay for. This is, in part, what Joseph J Esposito in a recent article on university presses in LOGOS and the Journal of Electronic Publishing calls ‘ the free rider syndrome. A university must provide for students and faculty and will actively encourage faculty to publish, but a press can be stinted because because it is always possible that a particular book will be published somewhere else.’

The major policy framework for higher education research in South Africa is the research and innovation policy developed by the Department of Science and Technology (DST).Starting with a background report commissioned from the IDRC in 1995, the department consolidated these findings in a White Paper on Science and Technology in 1996 and then updated this in South Africa’s Research and Development Strategy in 2002. To summarise somewhat brutally; the common theme across these policies is that South African research must address national development needs and contribute to employment and economic growth. The emphasis is on the value of collaborative and inter-disciplinary research in a rapidly-changing technological environment. While attention is paid to the need to build the international reputation of South African research, this is balanced out by a developmental focus that insists on a responsiveness to national need

As far as intellectual property is concerned, the Research and Development Strategy articulates the need to address the challenges posed by new technologies, and the question of biotechnology and indigenous knowledge. ‘International thinking on legislation is as fluid and fast-moving as the new technologies themselves’, there port comments. ‘We need to develop competencies as a matter of urgency or face exploitation and marginalisation with respect to our own resources. A clear approach to intellectual property that arises from publicly funded research is required’ (DACST 2002:22). However, the subsequent discussion of IP issues is far from clear,veering between recognition of the importance of public access and ‘appreciation of the value of intellectual property as an instrument of wealth creation in South Africa’ (68). These contradictions are not resolved in the strategy document and indeed legislative reform and policy formation concerning access and copyright have been in suspension in South Africa for some time.

If I were to hypothesise the outcome of these recommendations, as a publisher, I would look for a research dissemination policy that addressed the real needs of a country in a state of radical transformation, that incorporated the potential offered by new methods of knowledge dissemination, and that made provision for arange of publishing outputs to meet the needs of different audiences and constituencies. I would look for a focus on national, rather than international, dissemination in the first instance, to ensure that research findings could have the required impact. I would also look for funding mechanisms to support knowledge dissemination and for policies for public access. Lastly, I would look for an awareness of the potential for new dissemination models based on the advantages offered by new communication technologies to deliver effective research dissemination in the service of radically increased development impact.

This is, however, far from being the case. In a generally enlightened policy environment, publication is the Cinderella that is left abandoned in a dark 20th century kitchen. The White Paper on Science and Technology stresses the importance of developments in ICT. However, read in the context of the whole document, particularly when it comes to discussion of research dissemination, one begins to wonder if the global information revolution being spoken of here is not a matter of information technology minus the information that it is designed to transmit. In other words, the generally technocratic approach of the White Paper does not grapple with the need to communicate and transmit research information in order to achieve maximum impact. It is as if a pipeline is being designed and developed without the provision of the water that will run through it. This carries through into later policy documents so that,startlingly, dissemination and research outputs appear only as a matter of mechanical counts: the number of reports, journal articles and other publications, and patents registered.

It has been left to the Department of Education (DoE), then – at least thus far – to articulate more detailed policy on research publication. The DoE focused on the creation of an overarching policy initiative for higher education reform in South Africa : the formation of the National Commission on Higher Education (NCHE) in1994, which framed the discussion that ultimately led to the White Paper on Higher Education (1997) and the National Plan on Higher Education (NPHE) (2001). The policy-making process was characterised by wide-ranging discussion and debate, with an emphasis on consultation and transparency. Here, again, the framing discourse was developmental and the key issues were equity,diversity, redress and the creation of research strength.

Preliminary remarks in the NPHE on research and research dissemination sound encouraging: a strategic objective is ‘to promote the kinds of research and other knowledge outputs required to meet national development needs and which will enable the country to become competitive in a new global context’ (NPHE:60). The document complained of a lack of coherent policy on research outputs,promising policy development to address this issue. It raised the need to respond to the global transformation of knowledge dissemination through ICTs and talked of the need to build networks to fuel the growth of an innovation culture (NPHE:61). The problems identified are those of declining research publication output and the dominance of ageing white researchers as authors of publications.

When the Department of Education delivered the promised policy on research dissemination in 2003, in its Policy for Measurement of Research Output, it did pay lip service, in its preliminary comments, to the need ‘to sustain current research strengths and to promote research and other outputs required to meet national development needs’. However, the policy document then goes on to spell out a ‘publish or perish’ reward system that recognises and rewards peer reviewed publication in journals appearing in the ISI and IBSS indexes and a somewhat problematic list of locally-indexed journals, in part inherited from the apartheid era.Although peer reviewed books and conference proceedings accepted by an evaluation panel are also rewarded, they appear to have a lesser weighting in terms of financial rewards.

The wording of the policy insists on ‘originality’, rather than tackling the implications of the collaborative research approaches recommended in the research policy framework. The target audience of these publications is identified as ‘other specialists in the field’,therefore rewarding individual rather than collaborative effort and dissemination within the scholarly community rather than the wider dissemination that would be needed to deliver the development goals of the R&D and Innovation policy framework. In other words, the policies framing rewards for research publication remain firmly in a collegial tradition in which the purpose of scholarly communication is turned inwards into the academy. The system is related to personal advancement in academe and the prestige of scholars and institutions in the international rankings rather than grappling with what it might mean to couple this with gearing research dissemination towards broader social goals.

The fact that the DoE rewards the delivery of these publication targets with substantial financial grants means that the drive towards publication outputs in higher educational institutions focuses almost obsessively on the production of journal articles in accredited journals, with international journals carrying higher prestige than local journals. Given the ever-rising cost of commercial journals, over-stretched library budgets and a weak exchange rate, this can mean, particularly for the less well-resourced universities, that a good deal of South African research is not readily accessible to South African scholars, let alone the community at large.

Moreover, the long delay before publication, the outcome of the peer reviewing process and the way the journals are assembled means that journal information is all too often a matter of record – the history of an achievement rather than currently useful information.This is particularly the case in fast-changing technologies, but is no less the case in the human and social sciences, where the information being transmitted could often meet an urgent need, for example in dealing with the social impact of HIV AIDS, environmental crises, or with violence against women and children.

There are signs of hope that this impasse can be overcome. In there cent survey of scholarly publishing conducted by the Academy of Science of South Africa and commissioned by the DST, there is a clear commitment to boosting the quality and impact of local publication and to Open Access. South Africa is a signatory to the OECD Declaration on Access to Knowledge from Publicly Funded Research and this is tagged in the DST policy documentation as an area to bead dressed. I will write more on this in a subsequent posting.