Change the world

Innovation Office

A disclosure is the action of making new or secret information known in other words discussing your idea for a new innovation with the Innovation Office. Any information you provide us is treated as confidential. We will use the information to determine which protection can be sought for your innovation. To disclose, please schedule a meeting with the Innovation Office on 041 504 4309 or innovation@mandela.ac.za.

A public disclosure is any publication that is 1) enabling to a person of ordinary skill in the art, 2) sufficiently accessible, 3) and disclosed under non-confidential (implied or explicit) circumstances. Journal articles, including online publications prior to the journal’s hardcopy release, posters, slide shows, thesis publications, websites, e-mails, verbal presentations, and even funded grant applications (the NIH posts the title and abstract online and makes the application available in response to a Freedom of Information request) may be considered a public disclosure.

In most foreign countries, such a disclosure prior to filing a patent application will forfeit the ability of the university to obtain patent rights and, therefore, foreign patent applications will not be filed.

Under the employment contract you signed upon starting work at the university, you have an obligation to disclose all of your inventions, whether or not patentable, to the Innovation Office for evaluation. The disclosure is made and the accompanying disclosure form is completed during a legislated appointment with the Innovation Office. The Innovation Office will review your disclosure and make a determination whether the university has ownership in the invention as described above. The Innovation Office will ensure that the relevant protection is sought. The development, distribution and commercialization of your invention may provide significant public benefit and generate income for research and education at the university. A licensee of your invention may wish to sponsor research in your laboratory. Also, inventors receive a portion of net income generated by their inventions.
A patent protects innovations with novel, useful and non-obvious applications.
Patent protection does not prevent publishing. It only requires that the publication needs to be timed so that it doesn't appear in a journal or on the web until it is protected. Publishing an invention allows for its exposure to the scientific community and the rest of the public at an early stage, but does not prevent others from using the information for commercial purposes. Patenting an invention, on the other hand, increases the chances of cutting-edge research discoveries being pursued and developed for the benefit of society.
Registered designs protects the shape or outward appearance of an article.
Trade secrets are processes, strategies and items that are 1) secret, 2) valuable because they are secret and 3) whose owner(s) take reasonable measures to protect the secrecy thereof.
Copyright protects original expressions of authorship, as recorded in tangible media of expression.
Trade marks are marks or insignia associated with products or services as established in commerce.
Patent protection should be sought before publication takes place. Publication should be timed so that it doesn't appear in a journal or on the web until it is protected. Publishing an invention allows for its exposure to the scientific community and the rest of the public at an early stage, but does not prevent others from using the information for commercial purposes. Patenting an invention, on the other hand, increases the chances of cutting-edge research discoveries being pursued and developed for the benefit of society.
Disclosing to the Innovation Office is not equivalent to filing a patent application and does not directly or automatically protect patent rights. Protection of patent rights is only obtained through filing a formal patent application. The Innovation Office will assess each invention in terms of patentability and commercial potential, in order to determine whether to file a patent application. If the invention is appropriate for patent filing, the Innovation Office works with the inventor(s) and with external law firms to file and prosecute patent applications. The Innovation Office will continue to manage the patent application as long as it is deemed commercially valuable.

The Innovation Office will assign someone to your disclosure.  After evaluating the invention for patentability and commercial potential, a patent application may be filed. The Innovation Office will remain in contact throughout the development of the Intellectual Property and will work with you towards creating a market-ready application.

If the student is an undergraduate student they are not required to disclose their idea to us and are encouraged to contact the Propella Business Incubator (Nelson Mandela University’s incubator) with their idea. If it is a post-graduate student who created a form of Intellectual Property in the course of, or incidentally to, their studies, the student and supervisor(s) will need to contact the Innovation Office on 041 504 4309 or innovation@mandela.ac.za to discuss their idea with us. Please refer to the Intellectual Property Policy for Intellectual Property ownership.

Unlike authorship of a scientific publication, inventorship is determined in accordance with South African patent law. It is not uncommon for the inventors on a patent application to not be the same as the authors on a corresponding scientific publication. A lawful inventor is one who makes an inventive contribution to one or more of the patent claims that formally define the invention. Someone who provides equipment, space or money, no matter how critical to the development of the invention, is not an inventor. Also, someone who only performs work under the supervision of another party is not an inventor, even though that person may have worked long hours or conducted a critical experiment. An issued patent that fails to correctly and completely name the inventors may be ruled invalid under certain circumstances.

Patent claims may change as the patent application is being drafted and also while it is undergoing prosecution by the patent office, the names of the inventors may change as well. For the purposes of filing your disclosure with the Innovation Office, you will need to include the name(s) of the inventors as those individuals who you believe have made a creative contribution to the invention (a creative contribution may include contributing a seminal idea towards the conception of the invention or overcoming a technical hurdle in the reduction to practice of the invention).

Under the Intellectual Property clause, you agreed to disclose all inventions – even those made on your own time or as a consultant – to the Innovation Office so that we can determine if the university has any rights to the invention. You will be entitled to own your invention if: a) you made the invention without using any university facilities or resources, b) the invention is not subject to a third party obligation, such as a sponsored research grant, and c) the subject matter of the invention falls outside the scope of the subject matter of the research conducted by you and your immediate work group. Please contact the Innovation Office (041 504 2546) directly to discuss the issue further.

The Innovation Office may, under certain circumstances and terms, release an invention to the inventor(s). For further explanation of when a release may be provided, please contact us directly (insert contact information).

If the university can and does decide to release its rights in the invention back to the inventor(s), the inventor(s) must sign a letter stating he/she will not use university funds and facilities for further research or development of the invention. When ownership is released, patent prosecution and licensing becomes the responsibility of the inventor(s). Please contact the Innovation Office (041 504 2546) to discuss the issue further.

You are required to discuss your plans with the Innovation Office. To start, your Intellectual Property Officer (IPO) will ask you to file a Record of Invention form with the Innovation Office. The IPO handling your case will determine the appropriate licensing strategy for this technology which may or may not include licensing to your start-up. The IPO has an obligation to seek the best means to commercialize the invention for the benefit of the public and the university.
Yes, you are required to discuss your plans with the Innovation Office. Please refer to the Regulations for the Administration of the University’s Intellectual Property Policy.
There are many advantages to using the Innovation Office, including:
• financial (the Innovation Office pays all patenting costs, and you share the benefits under the Regulations)
• experience (collective and individual)
• experience in commercialisation
• skilled negotiators
• extensive networks and contacts which lead to partnerships, and in some cases research funding
• reduction of risk (the Innovation Office enters into commercial partnerships through Innovolve, the commercialisation company of NMMU, not you personally – you are protected from product liability and other risks)
The aim of Nelson Mandela University’s Intellectual property policy is to encourage and reward research and development that leads to the creation of intellectual property whilst fulfilling the main functions of the Nelson Mandela University as an institution of learning and research.

It is another aim of this policy to comply with the provisions of the Intellectual Property Rights from Publicly Financed Research and Development Act, 2008 (Act No. 51 of 2008). Under the IP Act of 2008, the Nelson Mandela University must develop and implement policies and procedures regarding the disclosure, protection, management and exploitation of intellectual property developed using public funds.

This policy should be read in conjunction with the Policy on Copyright (IRC number 110.02) and Code of Conduct for Researchers at Nelson Mandela University (IRC 404.01). The policy document can be viewed here.
Please contact the Innovation Office (041 504 2546). It will depend on the research funding agreement (please let us have a copy if you have one).

We need to ascertain what the funding agreement says about important questions such as:
• does the university or the company own the IP?
• who has the rights to file the patent?
• who will pay for it?
• will there be any financial benefit to researchers or university from successful commercialisation?
 

Please ask your academic colleague to put the Innovation Office in touch with the technology transfer office (TTO) at the other institution so we can start to discuss it. Which office leads will depend on how this piece of technology fits with other IP you or the other academic may already have, and on the research funding. We will take your views and those of the other academic into consideration.

Attaining a granted patent can take around 5-7 years, but it can also be quicker or slower than this, and some applications never reach grant.

There are many factors including:
• which territories you apply in and the route you take for the application
• what type of technology it is
• whether you get a grumpy patent examiner or one who is rushing to meet his examination targets for the month
• how broad your claims and examples are

Before you publish – any patent must be filed before the first public disclosure of the invention. A good time to contact the Innovation Office is when you are starting to prepare a draft paper on the work.

We will always try to work within your timescales for publication. If you come and talk to us at an early stage, it makes this much easier and the patent will be of better quality.

A patent also needs to include as full a description as possible of the technology, and at least some working examples.
Each case will be evaluated on its merits (commercial prospects, strength of innovation) and the Innovation Office will continue to support the patent while viable prospects for commercialisation can be balanced with the costs. All Innovation Office projects are subject to regular reviews and we consult with the researchers on plans. Certain points in the patenting process are particularly expensive and these are key decision points for the Innovation Office, eg entry to PCT (12 months from first filing), national phase entry (30 months from first filing), post-national phase review. One important factor in the evaluation is the ability and willingness of the researchers to support the manager in the project which may include continued work on the technology.

If the Innovation Office decides not to continue with the patent, it will be offered to you and your co-researchers for you to take up at your own cost in accordance with Nelson Mandela University Statutes.