INTELLECTUAL PROPERTY MANAGEMENT MANUAL

(DRAFT FOR DISCUSSION PURPOSES)

TABLE OF CONTENTS

1. 2.
2.1. 2.2. Definitions and Interpretation High-Level IP Workflow

INTRODUCTION 1 USING THE IP MANAGEMENT MANUAL 1

1 2

3.
3.1. 3.2. 3.3. 3.4. 3.5. 3.6. Introduction Purpose Responsibility and Authority Procedures Records References

SOP 1: ENGAGEMENTS WITH THIRD PARTIES 3

3 4 5 6 8 8

4.
4.1. 4.2. 4.3. 4.4. 4.5. 4.6. Introduction Purpose

SOP 2: INTELLECTUAL PROPERTY IDENTIFICATION 8

8 9 9 10 13 13

Responsibility and Authority Procedures Records References

5.
5.1. 5.2. 5.3. 5.4. 5.5. 5.6. Introduction Purpose

SOP 3: MANAGEMENT OF CONFIDENTIAL INFORMATION 13

13 14 15 15 18 18

Responsibility and Authority Procedures Records References

6.
6.1. 6.2. 6.3. 6.4. 6.5. Introduction Purpose

SOP 4:PROTECTION OF INTELLECTUAL PROPERTY 18

18 18 19 19 23

Responsibility and Authority Procedures Records

6.6.

References

7.
7.1. 7.2. 7.3. 7.4. 7.5. 7.6. Introduction Purpose Responsibility and Authority Procedures Records References

SOP 5 : RECORD KEEPING

APPENDIX 1
1.1. 1.2. 1.3. 1.4. 1.5. 1.6. Checklist A Checklist B Checklist C Checklist D Checklist E Checklist F

APPENDIX 2 APPENDIX 3

11. INTRODUCTION For UNISA to effectively manage its Intellectual Property two documents are required, firstly, an overall strategy document outlining the broad principles of an Intellectual Property Policy (the Policy) and secondly a hands-on management tool clearly teaching how to put the policy principals in force (the IP Management Manual including Standard Operating Procedures (SOPs)). These SOPs set out a number of workflows that enables the user to identify required actions, progress and decision making protocols. The workflows are aligned with the principles set out in the Policy. This document also includes a number of standard documents that will be encountered during the processes set out in the workflows. The SOPs are underscored by practical application.

12. USING THE IP MANAGEMENT MANUAL The purpose of this IP Management Manual is to augment the Policy. The SOPs provided in this IP Management Manual should not be interpreted in isolation, but with due regard for the IP Policy and the general management of UNISA intellectual property. The SOPs should be used as a practical guideline, and as an aid in giving effect to the IP Policy. It is important to understand that the IP Policy and SOPs are, and must always be regarded as, a suite of documents that interact with and relate to each another, and that none of the documents should be interpreted and/or implemented in isolation. 12.1. Definitions and Interpretation

All capitalised terms used in this manual shall have the meanings assigned to them in the IP Policy (unless the context clearly indicates otherwise) and all rules of interpretation set out in the IP Policy shall apply equally to this document. 12.2. High-Level IP Workflow Generally, the creation, identification, protection and management of IP will follow the process schematically represented below. The SOPs outlined in this document are intended to be applied at each stage of the IP workflow, as indicated in the diagram shown below.

13. SOP 1: ENGAGEMENTS WITH THIRD PARTIES 13.1. Introduction 13.1.1. Engaging with third parties may be a challenging task. However,

engagements with third parties can be rewarding provided that

the relationship is entered into with as full a knowledge of the potential partner and with as few unanswered questions between the two parties as possible. 13.1.2. In this regard, there are two primary rules to entering into a joint venture with a third party: Conduct a due diligence investigation; and Ensure that all the relevant issues have been addressed by completing the appropriate checklist selected from checklists A F (attached as Appendix 1 hereto). 13.1.3. A due diligence is essentially an investigation into the affairs of the potential partner. The nature of the engagement and the

contemplated length of time of the engagement will determine the extent of the due diligence investigation that is required. Due diligence investigations may include but are not limited to: Financial; Historical; Technical; and IP issues;

It is our recommendation that where more thorough due diligence investigations are required, that these are conducted by specialists in the field, for example, chartered accountants and/or patent attorneys. 13.2. Purpose 13.2.1. This SOP defines the procedure that must be followed when UNISA has any dealings with third parties in which intellectual property is

created, licensed or assigned. SOP 1 applies equally irrespective of whether UNISA approaches or is approached by the third party. Such engagements include but are not limited to: Licensing of technology, both in or out of UNISA: Licensing refers to the granting of permission by UNISA to another entity or by another entity to UNISA to use intellectual property, such as patented technologies, under defined conditions. Commissioning of development work: This is the granting of permission by UNISA to a third party to carry out a particular task or duty and deliver an agreed deliverable. Collaborative research or joint development arrangements: In such an arrangement each party in a joint development arrangement has something of value and is interested in working as a partnership to create something new of value. The valuable outcome may be the Intellectual Property created, which may be in the form of patented technology or know-how. Material transfer arrangements: This is an arrangement whereby tangible research materials are transferred between two organisations i.e. from UNISA to a third party or from a third party to UNISA, for research purposes only. Sponsored research arrangements: where funding, e.g. bursaries and the like, is provided for the conduct of specific research by or on behalf of a third party. In return UNISA expects access to research outcomes. 13.3. Responsibility and Authority This task shall be performed by the Technology Transfer Office (possibly

on recommendations of the IP Steering Committee, where such advice and recommendations may be sought by the Technology Transfer Office) abd an external IP legal advisor (hereafter IP Legal Advisor). 13.4. Procedures 13.4.1. Prior to entering any discussions with any third parties for any of the arrangements mentioned in clause 4.2.1 above, a confidentiality agreement must be signed by both parties. 13.4.2. As part of the preparations in regard to any licensing transaction, but particularly if UNISA has the intention of licensing in technology, a due diligence investigation on the third party may need to be carried out. An IP Legal Advisor should preferably be instructed by the Technology Transfer Office to conduct the due diligence in accordance with a specific budget. 13.4.3. The following checklists (attached as Appendix 1) should be completed in the negotiating of any of the arrangements set out above: Licensing-in technology for further development Checklist A Licensing-in turnkey technology Checklist B Licensing-out UNISA-owned technology Checklist C Commissioning development work Checklist D Research Collaboration/Joint Development Checklist A Material Transfer Checklist E Sponsored Research Checklist F

13.4.4. Following completion of the checklist and if the third party is a

foreign based entity, the agreed principles must be read against the Exchange Control Regulations, and where necessary, the Department of Trade and Industry Form DTP001. Reserve Bank approval must be obtained, if applicable, before signature of the documents by UNISA. 13.4.5. The agreed principles must also be tested against the Intellectual Property Rights from Publicly Financed Research and

Development Act 51 of 2008 (the IPR-PFRD Act), which will regulate the respective partys rights to intellectual property created with public funding and affect the manner in which UNISA commercialises its intellectual property. NIPMO approval must be obtained, if applicable, before signature of the documents by UNISA. 13.4.6. The checklist and any other data should preferably be passed before an IP Legal Advisor for comment (including an opinion on compliance with the Act and the requirements set out in the Exchange Control Regulations). 13.4.7. The checklist and any other relevant data must be passed to the Technology Transfer Office for negotiation, drafting and execution of the necessary agreements. The above procedure is summarized in the flowchart shown below.

13.5. Records The IP Legal Advisor in conjunction with the Technology Transfer Office maintains an accurate record of the negotiations. The original signed copies of all agreements are is retained by the Technology Transfer Office. 13.6. References

UNISA IP Policy Department of Trade and Industry Form DTP001 Exchange Control Regulations The Act

14. SOP 2: INTELLECTUAL PROPERTY IDENTIFICATION 14.1. Introduction As mentioned in the IP Policy, crucial to effective IP identification is to educate Employees, Students and Researchers as to when they have created IP. Employees, Students and Researchers must complete and

submit to their Line Managers an Invention Disclosure Form (IDF) if they are of the view that they have created an invention. The IDF essentially focuses on three questions: 1. 2. What was the problem you faced? What did the literature/experience (prior art) teach you about its solution? 3. How did you eventually solve the problem and what is the difference between your solution and that taught in the prior art?

An IDF is attached as Appendix 2. 14.2. Purpose 14.2.1. This procedure described the steps to be followed when any Intellectual Property comes into being as a result of the intellectual activities of any Employee, Student or Researcher. Such material may be: Know-How created by any Employees, Students or

Researchers, whether alone or in collaboration with third parties, e.g. technical equipment designers; Know-How as contained in theses or other dissertations authored by Employees, Students or Researchers; or Know-How developed by any Service Provider/Consultant using UNISAs Equipment, supplies, or resources; 14.2.2. This procedure is directed to the identification of registerable and unregistrable Intellectual Property, viz. Both patents and designs and Know-how. The identification of unregistered IP such as

Know-how is reflected in the procedure in that if the material is judged not registrable for any reason, every effort should be made: 1(i) to keep the information confidential and the know-how codification updated; and. 1(ii) to affix a confidentiality notice to all material embodiments of the know-how. 14.3. Responsibility and Authority This task shall be performed by the Employees, Student or Researcher who

created the intellectual property in collaboration with their Line Manager and the Technology Transfer Office. 14.4. Procedures All Employees, Students and Researchers must bring to the attention of their Line Manager, the creation of any material as set out in 5.2.1 above, together with the Invention Disclosure Form (Appendix 2). 14.4.1. The Line Manager and/or an appropriate expert reviews the material against the following enquiry: Is the material a solution to an existing problem and/or an original design? 14.4.2. If the answer is no, no further action needs to be taken and the material should remain confidential and UNISA should ensure that a confidentiality notice appears on all material embodiments thereof. 14.4.3. If the answer is yes, the Line Manager reviews the material against the following enquiry: Is the solution new and/or unique to UNISA? 14.4.4. If the answer is no, no further action needs to be taken but UNISA should ensure that a confidentiality notice appears on all material embodiments thereof, as follows: CONFIDENTIAL This contains information which is confidential and proprietary to UNISA. The information contained herein is to be used exclusively by you for the purpose for which it was disclosed by UNISA and may not be disclosed to anyone or be used for

10

any purpose other than as set out above, without UNISAs prior written consent. 14.4.5. If the answer is yes, the Employees, Student or Researcher concerned and his/her Line Manager must ensure that the material is not made available to the public in any way and the Line Manager passes the material together with the IDF and answers to the above enquiries to the Technology Transfer Office. 14.4.6. The Technology Transfer Office will review the material and either direct that no IP has been created or engage SOP4 (Protection of IP). The above procedure is summarised in the flowchart shown below.

11

12

14.5. Records The Technology Transfer Office maintains records of all submissions of potential IP and IP Disclosure Forms (Invention Disclosure Form set out in Appendix 2 attached). 14.6. References UNISA IP Policy

15. SOP 3: MANAGEMENT OF CONFIDENTIAL INFORMATION 15.1. Introduction 15.1.1. Effective management of Confidential Information is crucial to preserve the ability of the information to be commercialised and the benefits to be harnessed by UNISA and to ensure that UNISA is in compliance with the Act. 15.1.2. The Line Manager shall ensure that all material embodiments of proprietary Confidential Information is labelled with a confidentiality notice as follows: CONFIDENTIAL This contains confidential information proprietary to UNISA Holdings Limited (UNISA). The information contained herein is to be used exclusively by you for the purpose for which it was disclosed by UNISA and may not be disclosed to anyone or be used for any purpose other than as set out above, without UNISAs prior written consent. 15.1.3. Where information is particularly sensitive, the Technology Transfer office must be consulted regarding providing access to the information and for the labelling of the Confidential Information,

13

which is appropriate in the circumstances. 15.1.4. All external publications including but not limited to presentations and publication of papers/posters, must be specifically authorised by the Technology Transfer Office, or an individual appointed by the Technology Transfer Office, charged with the responsibility to vet the release of such information. 15.1.5. The individual thus charged must: Have and understanding of the technology included in the proposed public disclosure; Have a perspective of the R&D function of UNISA; and Have a perspective of the long term strategy of UNISA, with regards to the commercialisation of its Intellectual Property. 15.2. Purpose 15.2.1. This document establishes the procedure that has to be followed when any Confidential Information of potential importance to UNISA is proposed to be released to the public. As such, this procedure is applicable to:

The public disclosure of Confidential Information by any Employee, Student or Researcher whether alone or in collaboration with third parties;

The public disclosure of Confidential Information by any party that has engaged with UNISA for the conduct of research and which has not paid for the conduct of the research on a Full Cost basis;

The public disclosure of Confidential Information

by a Service

Provider or Consultant, that has created Confidential Information

14

in the course of rendering services to UNISA;

The publication of newsletters, advertising material, brochures and

other literature of whatever nature by UNISA; and

The inclusion of any material on any website, particularly the UNISA websites.

15.3. Responsibility and Authority This task shall be performed by individuals who have a perspective view of both the technical and commercial aspects pertaining to the technology in question. Ideally, this function

should be performed by the Line Manager in collaboration with the Technology Transfer Office. 15.4. Procedures 15.4.1. All Employees, Students, Researchers, Service Providers and Consultants must to bring to the attention of the Line Manager the potential disclosure of any Confidential Information that they intend disclosing. 15.4.2. The Line Manager reviews the material against the following enquiry: Is the information (whether a product, process, information about either or anything else) about to be made available to the public (whether in South Africa or anywhere else) by non-confidential written or oral disclosure, by use or in any other way? 15.4.3. If the answer is no, the information will remain confidential. 15.4.4. If the answer is yes, the line manager reviews the material against the following enquiry: Is the information new, original and/or unique to UNISA and

15

presently not generally known or readily ascertainable? 15.4.5. If the answer is no, the material is passed to the Technology Transfer Office with a recommendation that publication be authorised. 15.4.6. If the answer is yes, the material is passed to the Technology Transfer Office, which reviews the material against the following enquiry and formulates a recommendation accordingly: Is the material of (potential) commercial/strategic value to UNISA? 15.4.7. If the answer is yes, publication is denied in the short term, pending completion of SOP4 (Protection of IP). Following receipt of IP filing receipts etc. in terms of SOP No 4 (Protection of IP), the IP Legal Advisor authorises publication of the material. 15.4.8. If the answer is no, the Technology Transfer Office submits a request to NIPMO for approval for the publication of the information. On receipt of the requisite NIPMO approval, the Technology Transfer Office shall authorise the publication of the information by issuing a Public Disclosure Authorisation, which shall be written proof of the Technology Transfer Offices express authorisation of the public disclosure of the information. 15.4.9. No Employee, Student, Researcher, Service Provider or Consultant shall publicly disclose any Confidential Information without a Public Disclosure Authorisation having being issued by the Technology Transfer Office. The above procedure is summarised in the flowchart shown below.

16

17

15.5. Records The Technology Transfer Office maintains records of all requests for publication of material. 15.6. References

UNISA IP Policy; SOP2 (Identification of IP); and SOP4 (Protection of IP)

16. SOP 4:PROTECTION OF INTELLECTUAL PROPERTY 16.1. Introduction This procedure must be followed for the protection (registration) of any registerable intellectual property (IP) which has been identified in terms of SOP 2 (Identification of IP) or otherwise brought to the attention of UNISA. 16.2. Purpose 16.2.1. The Know-How for protection (registration) may be (but is not necessarily) presented in the form of:

Scientific papers authored by an Employee, Student or

Researcher, whether alone or in collaboration with third parties, e.g. suppliers;

Scientific papers, theses or other dissertations authored

by Employees, Students or Researchers for a private

18

party where the costs of the research are not covered on a Full Cost basis;

Reports or other material authored by Service Providers

or Consultants for or on behalf of UNISA;

Content intended for newsletters, advertising material,

brochures and other literature of whatever nature by UNISA;

Content intended for the UNISA websites; and

Know-How

developed

using

UNISAs

Equipment,

supplies, or resources. 16.2.2. This procedure is directed to the protection of registerable Intellectual Property, viz. patents and designs. The existence of unregistered IP such as Know-How is recognised. This is reflected in the

procedure in that if the material is judged not registerable for any reason, every effort should be made to keep the information confidential and the Know-How codification updated and confidentiality notices should be affixed to any material embodiment of the information. 16.3. Responsibility and Authority This task shall be performed by the Technology Transfer Office in conjunction with the IP Legal Advisor. 16.4. Procedures 16.4.1. The identified IP is scrutinised as to whether it is possible to protect the IP by way of registration, for example, by way of patent, design or other registration or whether the IP best left unregistered.

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16.4.2. In judging whether the IP should be registered, the IP must be reviewed against the following enquiry: Is it preferable or necessary to keep the information secret? 16.4.3. If the answer is yes, the information must be marked as confidential (and possibly the know-how codification updated). SOP3

(Management of Confidential Information) is also applicable to this information. 16.4.4. If the answer is no and the IP is capable of registration, the material is reviewed against the following enquiry: Are any of the following criteria satisfied? a marketable product, process or use of a product is in existence or in sight; there is a need to defend the technical field strategically; there is a possibility of licensing the intellectual property; or the application will hinder the competition.

16.4.5. If none of the criteria are satisfied the material is reviewed and, if necessary, the information contained in the material kept secret. 16.4.6. If the answer to one or more of the criteria is yes, a quote for the preparation and filing of the application in question must be solicited from the IP Legal Advisor. If the quote is not acceptable, further IP attorneys should be approached or the information kept confidential as above. 16.4.7. If the quote is acceptable the Technology Transfer Office instructs the IP Legal Advisor to proceed.

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16.4.8. The Technology Transfer Office requests the inventor/s to provide a technical specification for the invention for the purpose of assisting the IP Legal Advisor to draft a patent specification in respect of the invention. The inventors technical specification should take the form set out in Appendix 3 hereto. 16.4.9. The Technology Transfer Office must open an internal diary to match the deadlines as advised by the IP Legal Advisor from time to time. 16.4.10. To the extent that the information relates to any product, process, information about either or anything else relating to UNISA, whether new or existing and methods for their manufacture, the Know-How should be updated and maintained. The above procedure is summarized in the flowchart shown below.

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22

16.5. Records The Technology Transfer Office maintains a filing recording all

correspondence with the IP Legal Advisor. 16.6. References

UNISA IP Policy; SOP2 (Identification of IP); and SOP3 (Management of Confidential Information).

17. SOP 5 : RECORD KEEPING 17.1. Introduction Record keeping is important for the following reasons: Evidence that use was/was not an enabling disclosure; Freedom to operate; Inventorship; and First to invent/reduce to practice.

The latter is vital in the United States where interference proceedings allow for swearing back to a date of first invention which may pre-date your earliest priority date. Additional reasons for keeping laboratory or workshop notebooks include the demonstration of adherence to standards of good practice, academic and ethical integrity, validation of results to support grants and publications and to allow others to reproduce the work. For these reasons, laboratory and workshop notebooks are fundamental.

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17.2. Purpose This procedure establishes the steps to be followed in keeping records of laboratory and research activities. 17.3. Responsibility and Authority 17.3.1. This task shall be performed by all Employees, Students and Researchers involved in the conduct of research activities (hereafter Creators). 17.3.2. Each Creator must maintain a hardbound laboratory and workshop notebook with continuously numbered pages as a permanent record of their work and ideas. Notebooks should be kept in a safe place and should not be taken home. Notebooks and their contents are the property of UNISA. The original notebook and all related data should be returned to UNISA when completed, upon request or upon termination of engagement with UNISA. A custodian designated by the Line Manager shall be responsible for sequentially numbering and assigning new notebooks and cataloguing full notebooks. 17.4. Procedures 17.4.1. Creators should use permanently bound notebooks, e.g., notebooks with spiral or glue bindings. If loose-leaf sheets are used, they should be consecutively numbered and each page should be dated, signed, and witnessed. 17.4.2. Each notebook should be signed and dated on the inside front cover to indicate the first day the recipient started using the notebook. Each entry should be signed and dated. 17.4.3. An independent witness, i.e., someone who understands

the technology but will not be named as a co-inventor of

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the invention, should sign and date each entry after the statement: "Read and understood by ________." (The witness should preferably sign the entries on a contemporaneous or fairly contemporaneous basis, but entries can also be reviewed, signed, and dated on a periodic, e.g., weekly or monthly, basis.) 17.4.4. Notebook entries should be made in ink and in chronological order. Entries should not be erased or "whited out." If an entry contains an error, a line should be drawn through the error and new text should continue in the next available space. 17.4.5. Blank gaps between entries should be avoided. If a blank space is left on a page, a line or cross should be drawn through the blank space, and the page dated to prevent subsequent entries. 17.4.6. Prior entries should not be modified at a later date. If data were omitted, the new data can be entered under a new date and cross-referenced to the previous entry. Record experiments when they are performed. 17.4.7. Use the past tense (e.g., "was heated") to describe the experiments that were actually performed. 17.4.8. Explain all abbreviations and terms that are non-standard. Explain in context, in a table of abbreviations, or in a glossary. 17.4.9. Attachments such as graphs or computer printouts should be permanently affixed in the notebook (e.g., by stapling), and both the attachment and the notebook page signed and dated. If the attachment cannot be stapled, it should be placed in an envelope and the envelope stapled to the notebook page. The envelope and page should then be signed and witnessed making reference to the attachment being placed in the envelope.

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17.4.10. No original pages should be removed from the notebook. 17.4.11. When a new project or experiment is started, the objective and rationale should be briefly outlined (e.g., in a short paragraph or by providing a flowchart). 17.4.12. Relevant discussions from lab meetings should be recorded as should ideas or suggestions made by others. The names of the people making the ideas and suggestions should be carefully documented. This information may be important in establishing inventorship. 17.4.13. Record test descriptions, including preferred operating conditions, control conditions, operable and preferred ranges of conditions, and alternate specific materials; test results and an explanation of the results; and photos or sketches of the results or the test device. Any conclusions should be short and supported by the factual data. Opinions or speculation about the invention should be avoided. 17.4.14. Each lab or workshop must maintain a catalogue of notebooks in which each notebook is assigned a number, and the name of the author of each notebook is recorded. Further, the date the author received the notebook as well as the date the notebook was completed and turned in should be recorded. Upon leaving the lab or workshop, the author must return all notebooks checked out by or to him. 17.4.15. All completed notebooks must be indexed (e.g., by number, by author, by subject area) and safely kept in a central repository, together with corresponding patent applications. 17.4.16. Inventions on which patents have been granted should be kept for the life of the patent plus six years. Electronic lab or workshop

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notebooks are not always acceptable in legal proceedings as a substitute for original, permanently-bound, handwritten records, particularly with respect to proving dates of invention in patent cases. Until electronic lab notebooks are fully approved by the courts, a hard copy of all data should be maintained. The following is standard procedure to maintain electronic versions of laboratory or workshop notebooks: Back-up all electronic data to a clearly labelled "write once" media. Store the back-up copy in a safe place free from magnetic fields or other corruptive conditions. Print computer generated data to paper and label, sign (with a witness), and date the hard copy and permanently attach the hard copy to the handwritten notebook. Reference all electronic data in the handwritten notebook. Store the hard and soft copies with a record custodian who can vouch for their integrity. Maintain all records/data for the duration of your established document retention period. Computer systems should be regularly validated to ensure reliability, accuracy, and consistent performance.

Precautions should be taken against the importation of viruses. Hardware and/or software should be developed or used which prevents the ability of editing original research descriptions, i.e., WORM - Write Once, Read Many times. Additionally, all electronic records should be time-stamped by a separate server having highly restricted access. Prevent unauthorized access to your computer system. Use key and screen locks, as well as removable storage devices that can be locked away when not in use. Electronic/digital

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signature or encryption hardware and/or software will enhance the credibility of the electronic records. Limit access to the computer system to authorized personnel who have a genuine need for access. Limit distribution and use of information stored in the system. Frequently change individual user codes and passwords used to log on to the system and delete user codes when employees leave. Require periodic reports on who has accessed the system, and review the reports for any unauthorized persons. 17.5. Records 17.5.1. A custodian designated by the Line Manager should be responsible for sequentially numbering and assigning new notebooks and cataloguing full notebooks. 17.5.2. Records should be audited regularly to ensure compliance with the prescribed procedures. 17.6. References

UNISA IP Policy; SOP1 (Collaboration with Third Parties); and SOP2 (Identification of IP).

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APPENDIX 1 17.7. Checklist A In-Licensing for Further Development/Joint Development

TERM

Have

the

parties

defined

their

existing

intellectual

property

(Background IP) and what are the defined terms for IP to come into existence as a result of the development (Foreground IP)?

Is the licence to make, use, exercise, dispose of, offer to dispose of, and/or import the invention covered by the patent rights and/or other intellectual property?

Is the licence to be exclusive or sole or non-exclusive?

In which territorial area will the licence apply?

What forms of technical support or assistance will the parties provide in addition to the legal rights licensed?

What remuneration is contemplated (for example down-payment, running royalties, technical advisers fees)?

How is the remuneration to be paid and what provisions are to be made for periodic statements, audits and inspections of the licensees records?

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What minimum performance (if any) is the licensee required to perform in order to avoid sanctions such as the loss of exclusivity or the loss of the licence altogether?

Have the parties agreed on success criteria and associated time lines for delivery which may be linked to payments?

Which of the parties will own the IP resulting from the joint development (Foreground IP created by their employees and other office-bearers during the currency of the agreement)?

Where some of the parties do not own the Foreground IP, are they licensed to use the Foreground IP? conditions? If so, under what terms and

Who will attend to the patenting of improvements or other protection, and at whose cost?

What are the obligations of the parties to bring any IP to the attention of the other party and what requirements must be fulfilled before a party may publish any information relating to the Foreground IP?

How should the licensed products be marked to comply with legal requirements and to warn competitors that they risk possible legal action by attempting to copy the products?

Who will be responsible for monitoring the market to ensure that the licensed products or services are not illegally copied?

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To what extent will the parties participate in, and bear the costs of, legal proceedings against infringers of both the Foreground and Background IP?

How will the agreement be affected if one or more of the licensed rights expire or are found to be invalid?

What precautions will the parties agree to observe to ensure that the confidentiality of each others trade secrets and other confidential information is respected by the other party and its office-bearers and employees?

Should the parties give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the party is unaware of any such rights?

Do the parties intend that any licence should be recorded in the patents register to ensure that the licensees rights and status become known to the public?

Are the parties satisfied that nothing in the agreement runs counter to any provisions of the Act, the Patents Act 57 of 1978 (notably sections 57, 58 and 90) or of the Competition Act.

Will the licensee be entitled to assign or sublicense the rights enjoyed by it under the agreement, and if so in what circumstances? Will any such assignment also apply to the licensees obligations?

What is the term of the agreement and do options exist for its

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extension?

Is the coming into force of the agreement dependent on the obtaining of Exchange Control or NIPMO approval for the transaction (applicable where the licensor is a foreign entity and manufacture of an article embodying the IP is intended to take place in SA)?

Do the contemplated IP provisions (IP ownership and licence) comply with the Act?

Who will be responsible for the maintenance in force of the patent rights?

What steps does the licensee agree to undertake in order to ensure that the market for the licensed products or services is adequately served and is expanded to the fullest extent?

How are notices by the parties to be made to reach each other, and at what addresses?

In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

To what extent does the agreement supersede other agreements and

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arrangements between the parties?

Which countrys law will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement and the recordals, if any, thereof?

17.8. Checklist B Licensing in Turnkey Technologies

TERM

Is the licence to make, use, exercise, dispose of, offer to dispose of, and/or import the invention covered by the patent rights?

Is the licence to be exclusive or sole or non-exclusive?

In which territorial area will the licence apply?

What forms of technical support or assistance will the licensor provide in addition to the legal rights licensed?

How will the licensee take possession of the intellectual property licensed? Is there any obligation on the licensor to train the licensee in order to impart know-how?

What remuneration is contemplated (for example down-payment, running royalties, technical advisers fees)?

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How is the licensors remuneration to be paid and what provisions are to be made for periodic statements, audits and inspections of the licensees records?

What minimum performance is the licensee required to perform in order to avoid sanctions such as the loss of exclusivity or the loss of the licence altogether?

Which of the parties will own the rights in patentable improvements to the licensed technology made by their employees and other officebearers during the currency of the agreement; who will attend to their patenting or other protection, and at whose cost?

Do the provisions regarding IP ownership of improvements comply with the IPR-PFRD Act?

How should the licensed products be marked to comply with legal requirements and to warn competitors that they risk possible legal action by attempting to copy the products?

Who will be responsible for monitoring the market to ensure that the licensed products or services are not illegally copied?

To what extent will the licensee participate in, and bear the costs of, legal proceedings against infringers of the licensed property?

How will the agreement be affected if one or more of the licensed patents expire or are found to be invalid?

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What precautions will the licensee agree to observe to ensure that the confidentiality of the licensors trade secrets and other confidential information is respected by the licensee and its office-bearers and employees?

Should the licensor give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the licensor is unaware of any such rights?

Do the parties intend that the licence should be recorded in the patents register to ensure that the licensees rights and status become known to the public?

Are the parties satisfied that nothing in the agreement runs counter to any provisions of the current Patents Act 57 of 1978 (notably sections 57, 58 and 90) or of the Competition Act.

Will the licensee be entitled to assign or sublicense the rights enjoyed by it under the agreement, and if so in what circumstances? Will any such assignment also apply to the licensees obligations?

What is the term of the agreement and do options exist for its extension?

Is the coming into force of the agreement dependent on the obtaining of Exchange Control approval for the transaction (applicable where the licensor is a foreign entity and manufacture of an article embodying the IP is intended to take place in SA)?

35

Who will be responsible for the maintenance in force of the patent rights?

What steps does the licensee agree to undertake in order to ensure that the market for the licensed products or services is adequately served and is expanded to the fullest extent?

How are notices by the parties to be made to reach each other, and at what addresses?

In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

To what extent does the agreement supersede other agreements and arrangements between the parties?

Which countrys law will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement and the recordals, if any, thereof?

17.9. Checklist C Licensing Out to Third Parties

36

TERM

Is the licence to make, use, exercise, dispose of, offer to dispose of, and/or import the invention covered by the patent rights?

Is the licence to be exclusive or sole or non-exclusive?

In which territorial area will the licence apply?

What forms of technical support or assistance will the licensor provide in addition to the legal rights licensed?

What remuneration is contemplated (for example down-payment, running royalties, technical advisers fees)?

How is the licensors remuneration to be paid and what provisions are to be made for periodic statements, audits and inspections of the licensees records?

What minimum performance is the licensee required to perform in order to avoid sanctions such as the loss of exclusivity or the loss of the licence altogether?

Which of the parties will own the rights in improvements to the licensed technology made by their employees and other officebearers during the currency of the agreement; who will attend to their patenting or other protection, and at whose cost? What are the obligations of the parties to bring any improvement IP to the attention of the other party and what requirements must be fulfilled before the

37

party may publish any information relating to the improvement IP?

Where a party does not own the IP associated with improvements to the licensed technology, is it licensed to use these improvements? If so, under what terms and conditions?

How should the licensed products be marked to comply with legal requirements and to warn competitors that they risk possible legal action by attempting to copy the products?

Who will be responsible for monitoring the market to ensure that the licensed products or services are not illegally copied?

To what extent will the licensee participate in, and bear the costs of, legal proceedings against infringers of the licensed property?

How will the agreement be affected if one or more of the licensed patents expire or are found to be invalid? (A common solution to this problem is to apportion the royalty between the various items in the package of rights licensed and to provide that the portion attributable to any particular item of the package will fall away if that item proves to be invalid or unenforceable).

What precautions will the licensee agree to observe to ensure that the confidentiality of the licensors trade secrets and other confidential information is respected by the licensee and its office-bearers and employees?

Should the licensor give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the licensor is

38

unaware of any such rights?

Do the parties intend that the licence should be recorded in the patents register to ensure that the licensees rights and status become known to the public?

Are the parties satisfied that nothing in the agreement runs counter to any provisions of the current Patents Act 57 of 1978 (notably sections 57, 58 and 90) or of the Competition Act.

Will the licensee be entitled to assign or sublicense the rights enjoyed by it under the agreement, and if so in what circumstances? Will any such assignment also apply to the licensees obligations?

What is the term of the agreement and do options exist for its extension?

Is the coming into force of the agreement dependent on the obtaining of Exchange Control approval for the transaction (applicable where the licensee is a foreign entity)?

Does the contemplated licence comply with the provisions of the IPRPFRD Act?

Has approval from NIPMO been obtained, where required?

Who will be responsible for the maintenance in force of the patent rights?

39

What steps does the licensee agree to undertake in order to ensure that the market for the licensed products or services is adequately served and is expanded to the fullest extent?

How are notices by the parties to be made to reach each other, and at what addresses?

In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

To what extent does the agreement supersede other agreements and arrangements between the parties?

Which countrys laws will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement and the recordals, if any, thereof?

17.10. Checklist D Commissioning Agreement (UNISA Commissioning a Service Provider/ Consultant)

40

TERM

Have

the

parties

defined

their

existing

intellectual

property

(Background IP) and what are the defined terms for IP to come into existence as a result of the development (Foreground IP)?

Where UNISA does not own the Foreground IP, is it licensed to use the Foreground IP? If so, under what terms and conditions?

Where the third party owns the Foreground IP what restrictions are placed on the third party in terms of how the IP can be used in future (for example, the third party should agree that it will not be used in any way that has the potential to prejudice UNISA)?

What are the terms of use of UNISAs Background IP for purposes of the commission?

What forms of technical support or assistance will UNISA provide?

What remuneration is contemplated (for example down-payment, running royalties, technical advisers fees)?

How is the remuneration to be paid and what provisions are to be made for periodic statements, audits and inspections of the records?

The parties should agree on success criteria and associated time lines for delivery which may be linked to payments.

41

To what extent will the parties participate in, and bear the costs of, legal proceedings against infringers of both the Foreground and Background IP?

What precautions will the parties agree to observe to ensure that the confidentiality of each others trade secrets and other confidential information is respected by the other party and its office-bearers and employees?

Should the parties give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the party is unaware of any such rights?

Are the parties satisfied that nothing in the agreement runs counter to any provisions of the current Patents Act 57 of 1978 (notably sections 57, 58 and 90) or of the Competition Act.

Will either party be entitled to assign or sublicense the rights enjoyed by it under the agreement, and if so in what circumstances?

Is the other party a South African public entity? If so, is the Full Cost of the project being funded by UNISA? If not, do the contemplated provisions comply with the IPR-PFRD Act?

What is the term of the agreement and do options exist for its extension?

How are notices by the parties to be made to reach each other, and at what addresses?

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In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

To what extent does the agreement supersede other agreements and arrangements between the parties?

Which countrys laws will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement?

17.11. Checklist E Material Transfer

TERM

Have

the

parties

defined

their

existing

intellectual

property

(Background IP) and what are the defined terms for IP to come into existence as a result of the material transfer (Foreground IP)?

What are the terms of use of UNISAs Background IP for purposes of the transfer?

43

What forms of technical support or assistance will UNISA provide in addition to the material transferred?

What is the party receiving the material entitled to do with the material (for example, in some instances a receiving party may be prevented from reverse engineering a product or conducting a chemical analysis on a sample)?

Are there any specific conditions under which the material must be stored?

Must the receiving party take out insurance against damages incurred as a result of fire or theft of the material? If so, in what annual and aggregate amount?

What remuneration is contemplated (for example down-payment, running royalties, technical advisers fees)?

How is the remuneration to be paid and what provisions are to be made for periodic statements, audits and inspections of the records?

Which of the parties will own the rights in patentable improvements to the material transferred during the currency of the agreement (Foreground IP) and who will attend to patenting or other protection, and at whose cost? What are the obligations of the parties to

bring any Foreground IP to the attention of the other party and what requirements must be fulfilled before a party may publish any information relating to the Foreground IP?

44

Do the contemplated IP provisions comply with the IPR-PFRD Act?

To what extent will the parties participate in, and bear the costs of, legal proceedings against infringers of both the Foreground and Background IP?

What precautions will the parties agree to observe to ensure that the confidentiality of each others trade secrets and other confidential information is respected by the other party and its office-bearers and employees?

Should the parties give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the party is unaware of any such rights?

What is the term of the agreement and do options exist for its extension?

How are notices by the parties to be made to reach each other, and at what addresses?

In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

45

To what extent does the agreement supersede other agreements and arrangements between the parties?

The law of what country will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement?

17.12. Checklist F Sponsored Research Agreement

TERM

Have

the

parties

defined

their

existing

intellectual

property

(Background IP) and what are the defined terms for IP to come into existence as a result of the development (Foreground IP)?

Does the arrangement comply with the provisions of the IPR-PFRD Act?

What are the terms of use of UNISAs Background IP for purposes of the sponsored research?

Who will own the outcomes of the research (the Foreground IP)?

If UNISA does not own the Foreground IP, does it have a licence to use the Foreground IP? If so, is this licence fully paid-up,

46

transferrable and does it include the right to sub-licence third parties?

To what extent will the sponsor participate in research?

What remuneration is contemplated? Is it the Full Cost of creating the anticipated Foreground IP?

How is the remuneration to be paid (eg. Stage-gate based on research outcomes?) and what provisions are to be made for periodic statements, audits and inspections of the records?

What are the reporting requirements?

Have the parties agreed on success criteria and associated time lines for delivery which may be linked to payments?

Have the parties undertaken to secure IP rights to the research outcomes (Foreground IP) from their employees and other officebearers during the currency of the agreement; who will attend to their patenting or other protection, and at whose cost?

To what extent will the parties participate in, and bear the costs of, legal proceedings against infringers of both the Foreground and Background IP?

What precautions will the parties agree to observe to ensure that the confidentiality of each others trade secrets and other confidential information is respected by the other party and its office-bearers and employees?

47

Should the parties give any warranty about the absence of conflicting patent rights of third parties, or at least a warranty that the party is unaware of any such rights?

Will the parties be entitled to assign or sublicense the rights enjoyed by them under the agreement, and if so in what circumstances?

What are the obligations of the sponsored party to bring any IP to the attention of UNISA and what requirements must be fulfilled before the sponsored party may publish any information relating to the sponsored work

What is the term of the agreement and do options exist for its extension?

How are notices by the parties to be made to reach each other, and at what addresses?

In what circumstances may the agreement be terminated and what will the consequences of termination be?

What action may an aggrieved party take in the event of a breach of the agreement by the other?

In what circumstances may the parties amend the agreement?

To what extent does the agreement supersede other agreements and arrangements between the parties?

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Which countrys laws will govern the terms of the agreement?

Who is to bear the costs of preparing the agreement?

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APPENDIX 2

INVENTION DISCLOSURE FORM

This form is STRICTLY CONFIDENTIAL

1. TITLE (Name of Invention)

2. INVENTOR(S)
Inventor 1 Full name(s) Position E-mail Telephone No. Inventor 2 Inventor 3

3. WHAT IS THE EXISTING PROBLEM?

4. WHAT IS ALREADY ESTABLISHED IN LITERATURE AND/OR WHAT INFORMATION

HAS BEEN MADE AVAILABLE BY UNISA?

5. HOW HAVE YOU OVERCOME THE PROBLEMS FACED?

Signed: ..

Date: ..

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APPENDIX 3

TECHNICAL SPECIFICATION GUIDELINE

The following guidelines shall be used when a technical description is prepared for the benefit of a patent attorney when drafting a patent specification:

Title Provide a short but descriptive title for the invention. This should specifically describe the invention, and not the potential trade name that may be associated with the invention.

Prior Art Description

Describe background intellectual property that forms part of the public domain (prior art) and that is relevant or at least closely related to the newly developed IP. Also include an assessment of shortcomings / disadvantages of the prior art.

Purpose of the Invention

Provide an introductory description of the purpose or goal that the application of the invention sets out to achieve. Include a detailed discussion of the advantages of the invention when compared to the prior art.

Description of the Invention

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Provide a detailed description of the invention, and particular include (if applicable): Description of process followed: Description of method applied; Description of system / components used. The novel aspects of the processes, methods, systems, components and combinations of the aforesaid should be emphasized. Attention should also be given to alternate and derived forms that the invention may assume. Likewise, envisaged modifications and alterations that would alter the embodiment of the invention, but which would still fall within the spirit and/or the scope of the invention, must also be included.

Examples

A specific (and preferred) embodiment of the invention should be described by way of an example using actual experimental data (if available).

Drawings/Diagrams

Any drawings/schematics/flow diagrams that would assist in explaining the invention should be included.

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