Intellectual Property Rights from Publicly Financed Research and Development Bill (B46 2008)

Intellectual Property Rights from Publicly Financed Research and Development Bill (B46 – 2008)

Comment for The Portfolio Committee on Science and Technology

Roy J Page –Shipp (former Director, CSIR, now retired) 3 Manor Ridge 60 Carol St LYNNWOOD MANOR Pretoria 20 July 2008.

Comment on :

Intellectual Property Rights from Publicly Financed Research and Development Bill (B46 – 2008)

Overview This Bill rightly deals with the important issue of preservation of the (mainly commercial) benefits that could be derived, on behalf of the people of South Africa and their institutions, from the outputs of publicly financed research. However, the author wishes respectfully to point out two major shortcomings which, if not corrected or amended, will undermine the efficacy of the proposed legislation significantly, if not entirely. These are:

1 The definition of Intellectual Property is too broad and inconsistent with established good practice

2 The proposal to establish institutional Intellectual Property Management Offices (IPMO’s ) fails to take account of important human dynamics – especially relating to the empowerment of researchers.

The following expands on these points, hopefully sufficiently for the purpose of the Portfolio Committees. However, should the Committee wish the author to present his views in person and respond to their questions he is more than willing to do so.

The definition of Intellectual Property

The Bill defines Intellectual Property as (author’s bold) ‘non-patentable and patentable inventions, and one or more of copyright, designs, trade marks, in as far as they are an integral part of such inventions;’

This is a typical and workable definition with the exception of the words ‘non-patentable’ relating to inventions. The insertion of these words significantly vitiates the intentions and likely success of the envisaged legislation. In what follows, the focus is entirely on inventions.

‘Intellectual Property’ means what it says;

1  Intellectual – ie created by a single mind (or commonly in modern research) a collection of minds  Property – that which can be owned, bought or sold.

The intention of the legal field of IP is to provide exclusive rights to the use of inventions, for the inventor(s) or their assignees, whether employers of the inventor, or purchasers of the exclusive rights.

Patentable inventions must be novel, useful, and non-obvious. The definition is clear and many years in use have created standard and acceptable approaches, including case law, to identifying these characteristics, especially as far as novelty and obviousness are concerned.

Patents are thus the instrument by which intellectual property that can be owned, bought or sold may be identified, and the use of the words patentable inventions appropriates a large body of knowledge for the use of those who must manage the relevant research activities and the related legislative and commercial processes.

The introduction of the word ‘non-patentable’ into the definition throws this into disarray. Claims for inventions that do not fit the ‘patentable’ mould are impossible to identify and manage. Rights to their usage are not typically ‘owned’ by the organisation and it can therefore not trade in them, least of all transfer exclusivity of their use to others.

The confusion may have arisen from the increasing focus on Intellectual Capital, or the accumulation of knowledge products that an organisation has available to it. These form the basis of the emerging discipline of Knowledge Management which requires special skills and attention to the inter-personal aspects of accessing knowledge which is – and this can be the overwhelming majority of knowledge in an organisation – held within and between the minds of the staff. Such knowledge cannot be traded because it does not belong to the organisation – it is merely accessible to the organisation by virtue of the employment contracts with the staff. It may be provided freely or reluctantly to the organisation by the individuals that hold it and this interaction depends on the openness and perceived fairness of organisational incentive and other systems. Very often it is irrecoverably lost to the organisation when an employee leaves, for whatever reason.

To sum up: The words ‘non-patentable’ should be excised from the definition of Intellectual Property.

Researcher dynamics and the IPMO’s

Researchers who are in high demand for their productivity and creativity are typically both highly intelligent and very independent-minded. . To influence their behaviour it is necessary to do more than create a bureaucratic structure to monitor them and intrude on their work processes. This ought to be obvious to anyone who has spent any serious effort in ‘Managing’ (and the inverted commas are very relevant) researchers, or knowledge workers of any kind for that matter.

The identification of the patentable aspects of any creative research process will require a combination of scientific/technical skills and legal expertise (this latter including considerable experience) that is unlikely to be available in any IPMO. Persons with such skills are in high demand as patent attorneys. In practice IPMO’s are likely to be staffed by cadres of recently qualified lawyers. If they are perceived to be a hindrance to the work of the researchers, or worse, as ‘IP Prefects’ the researchers will run rings around them and undermine their effectiveness.

The desired result can be better achieved by

2 1. Training the researchers in the behaviours that they need to exhibit to identify and protect patentable knowledge, eg early identification, sound record-keeping, non- disclosure until rights have been secured etc. Given their high levels of intelligence and the ongoing need to master new skills for their research to succeed, this should not be a daunting prospect. Indeed they need to have this understanding because most of the key aspects of IP protection need to be dealt with before any disclosure to an IPMO comes into play. All research contracts should include a standard clause reserving the research organisation’s rights in the event of work resulting in a patentable invention. 2. Positioning the IPMO as a resource to assist the line management of the research organisation to achieve both the research and the IP securement activities. The notion that patents can be handed over to an ‘office’ which will handle the ‘technology transfer’ is absurd. Effective technology transfer requires the ongoing collaboration of the inventors until the innovation has been mastered by the exploiting party. This is especially true when the absorption capacity of the exploiting party is limited, as is likely to be the case in SMMEs.

To sum up: The training and empowerment of researchers to look after organisational interests in regard to Intellectual Property protection is necessary in its own right and should be mandatory. IPMOs should be repositioned to support the research teams and not to monitor them.

Roy Page-Shipp 21 July 2008

Short CV attached.

3 CV: ROY PAGE-SHIPP, ID No 421118 5049 086.

Roy Page-Shipp, who holds an MSc degree, retired from the CSIR at the end of 2002 after 27 years with the organisation in which he played a number of roles, including

Head, Environmental Engineering Division, National Building Research Inst (NBRI) 1975 – 1981 Assistant Director, NBRI 1981 – 1987 Director, Division of Building Technology (Boutek) 1987 – 1992 Director, Special Projects, CSIR 1992 – 1994 Manager, Programme Management Service, RDP Office and National Dept of Finance (on secondment from CSIR) 1994 – 1996 Director, Strategy Support, CSIR 1997 – 2002

In addition to general management in a Research and Innovation Organisation, he has specialised in Strategic and Scenario Planning, especially the facilitation of complex decision making processes. A particular speciality is the facilitation of sessions using the Think Tools planning suite.

His principal recent and current activities include:  Teaching Knowledge Management at the Gordon Institute of Business Science  Management of a Ford Foundation project aimed at redesigning SA researcher access to the global literature  Facilitation of planning and decision-making processes over a wide range of topics. Recent examples include the nomination process for members of the Board of the ZA Domain Authority and innovative strategy development for the Border Police.  Training users of Think Tools who hold licences owned by the SA Government – 6 full training sessions in the past year.  Preparation of a position paper on Access to Research Data from Public Funding for the Dept of Science and Technology.

Recent Publications

 Paterson, AD,. van Vliet, B,. Page-Shipp, RJ. and O’Driscoll, M. Future Scenarios Enable Robust Strategic Navigation for Firms providing Knowledge-Intensive Services. 8th International Forum on Technology Management. Grenoble, France. November 1998.  Page-Shipp, RJ. Knowledge Management - an Approach Tailored to Knowledge-based Organizations. Intl Assn for the Management of Technology Conference, IAMOT 2000, Miami, Mar 2000.  Page-Shipp, RJ and Kfir, R. The Production of Knowledge-based Technology Products - beyond Knowledge Use in Production. IAMOT 2001, Lausanne, Mar 2001.  Page-Shipp, RJ and Hammes, M. Global e-Research Trends and Their Implications for South African Research Publishing in Print or Online . Ch 5. Report on a Strategic Approach to Research Publishing in South Africa. Ed W Gevers, ASSAf, Mar 2006.