Gray Area

IPR Act Regulations promulgated - the death knell for open science in South Africa?

The Deprtment of Science and Technology has published the Regulations for the implementation of the IPR Act of 2008. These have serious implications for researchers and the universities and research institutions they work in and even more dire implications for open access and open innovation in South Africa.

I set out below my preliminary reading of what these Regulations might mean. However, they are not very well drafted and contain some confusions, so it would be good to share reactions from researchers on how they see this affecting their research practices. The time for responding is short - we have until 8 May.

How this relates to what is happening in the rest of the world will follow in subsequent blogs, as will feedback as UCT and other institutions grapple with what this means for how research will be carried out in South Africa.

A brief recap for those who are not familiar with the Act.

The full name of the Act is The Intellectual Property Rights from Publicly Funded Research and Development Act, 2008. (I blogged the Draft Bill last year here and here and here and here and here) In 2009, one would expect a piece of legislation dealing with publicly funded research to be dealing with access to research, but that could not be further from the case of this legislation. To put it briefly, this is designed to ensure that all publicly funded research gets intellectual property protection for the purposes of commercialisation. This seems to be the only way that this legislation can conceive of public benefit from research. Open innovation, open science, open access and open source have to get special permission from the bureaucrats before they will be allowed.

The provisions of the Act

Before looking at the Regulations, researchers need to grapple with the basic definitions and provisions in the Act:   

  1. The central provision of the Act is that universities carrying out research from public funds have to assess and report on all research carried out in the university that might have the potential for IPR protection and commercialisation. (Which being translated means they are patentable – but beware; it means more than that, as set out below.)
  2. If the university/researcher does not want to lock down the IP in the research, then this decision has to be made according to the guidelines provided by the national IP Management Office (NIPMO) and it has to be notified of this decision. NIPMO then reviews this decision and can, if it disagrees with the university, acquire ownership of and obtain statutory protection for the IP in this research. In other words, the university and its researchers no longer have the right to make their own decisions on how best to ensure the impact of their research.
  3. Research funded by private organisations only counts as not being publicly funded if the full cost of the research is covered, including all direct and indirect costs (15b). Does this mean that if you are running a research programme with donor funding, but UCT supports your office and computer infrastructure, your research is subject to this Act?

How is intellectual property defined in the Act?

In other words, what does this really mean for researchers and who would be affected by it? The primary focus of this legislation is clearly patents, but those researchers who think that their work has nothing to do with patents in South African law need to think again.

The definition of IP in the Act excludes copyrights in published works, and includes ‘creations of the mind’ that are capable of being protected under South African and foreign IP law. That means that software and business processes, patentable in the US but not in SA, have to be considered in terms of this Act. Databases, which are protected under the EU database provisions, would also fall under this legislation. Trademarks, artistic works and designs would presumably have to be considered, too.

It is clear therefore that researchers in humanities, social sciences, business school, and architecture cannot sit back on the assumption that these provisions would not apply to them because what they do is not normally patentable. Nor can any unit working with open source software development. The scale of what this might mean for the university IP office and for individual researchers is daunting; even more so the volume of forms to be filled in. But most of all, it is the loss of freedom for researchers and the university to make their own decisions on how to manage the dissemination of their work and how to ensure its impact that is most threatening.

What do the Regulations say?

When a decision is made on whether or not a piece of research requires protection, the only basis on which the researcher or the university can make this decision on their own is that it is not patentable (2 (2)). In any other case, a form has to be filled in and the decision referred to NIMPO. The criteria that NIMPO will apply include the sector, potential contribution of the research, commercial and social potential and the ability for this work to be protected under any law anywhere in the world.

Provisions are then made for what happens if the State takes over the IP rights (2(8)) and what happens if permission is given for them to be waived (in which case they have to be offered to the funders of the research or, where there is no private funding, to the researcher concerned) (2 (9,10,11)).

Researchers will need to think about how this sits with the funders of research that they carry out.


Open science, open access and open source

There is confusion in the Regulations between public domain, open source and open access (see Andrew Rens's blog on this question), but Section 2 (12) appears to be trying to say that where a the university wants to make research open access or develop open source software, it has to fill in a form and apply to NIMPO. If the need to make the research open comes from the requirements of cooperative research agreements or funder requirements, then this has to have prior approval from NIMPO. According to the Regulations, NIMPO then decides whether this agreement is in the best interests of the country or not (2 (14)).


It looks as though the university and its research departments will not be able to join collaborative research ventures or accept funding from donors who require open dissemination without government permission.

Andrew Rens thinks this might be unconsitutional - see his Aliquid Nova blog.

Given the requirements of some of UCT’s largest research funders, this is somewhat startling. This would also be threatening to a department like the Centre for Educational Technology, which has contracts with an international consortium, Sakai,  that requires assurance that all software developed has no IP restrictions and is open source.

How is this going to affect UCT’s research collaborations and research funding agreements?


The NIPMO Structures 

What skills will the NIMPO Advisory Board, which will oversee all this, bring to bear? It will consist of people chosen for their ‘knowledge and experience in intellectual property management, commercialisation, technology transfer, and business skills’ (4 (6)). In other words, people without special research knowledge or familiarity with disciplinary fields will be making decisions about how research could best impact on the country.


Revenue sharing

Researchers do get the right to revenue earned from the commercialisation of their research (7(1). However, the deductions that can be made before this happens sound somewhat threatening, as they include expenses for ‘filing, prosecution and maintenance of statutory protection; bank fees and other charges for collecting revenues due; defence, validation and enforcement of IP rights; legal advice; market research, marketing and sales, travel costs and admin expenses, up to R1 million (7 (2)). In truth, there is not much likely to be left after all this. If I were a researcher in this position, I would not be holding my breath. Perhaps, like the music recording industry, the creator will land up owing more than is earned.



There are detailed provisions for how NIPMO will intervene in the granting of exclusive licences, offshore deals, assignment of rights. In the case of exclusive licences granted, NIPMO can walk in and reverse these licences if they think that commercialisation is not adequate.


Auditing and retrospective licensing

Then there is a retrospective clause that says NIMPO can audit a university’s disclosure of IP. The university is required to fill in forms twice a year detailing the IP governed by the Act and how it has been commercialised. Then NIMPO can audit annually. If it finds that any IP has not been declared, then it can retroactively enforce assignment of the rights (11 (2)). 

 Does this mean that the university’s ability to contract with donors who require assurances of open IP management will be compromised? How could the university offer such assurances if they can be reversed by NIMPO at a later date?

This will surely mean that super-caution will be exercised by submitting everything for approval before research contracts begin. And what effect would that have on research effectiveness?


Research collaboration

When it comes to dealing with private organisations and institutions, the university could licence a share of the IP to a co-owner. If the university enters into a collaborative research agreement, it must retain ownership of any pre-existing IP and commercialise this in line with the Act; retain IP rights in what it produces, or jointly own IP. It must ensure the commercialisation in SA of this collaborative research. 

If the partners in the collaboration require open licences, then NIPMO has to approve before the university can enter such an agreement. NIPMO will publish guidelines on how universities have to manage such collaborations (12 (3)). 

How will universities manage their research collaborations with this level of interference? And what effect will this have on research output and its social and economic impact?

Stealing Empire - read, listen and join the subversion

This weekend, from 14-17 June the Cape Town Book Fair takes over the Cape Town International Convention Centre, so this blog is about a new book, Stealing Empire, by Adam Haupt, published by the HSRC Press. Last year  close on 50,000 visitors attended, giving the lie to the idea that South Africans don't read and are not attracted to books. As Dave Chislett said today in his new blog - the Chiz- on The Times newspaper's blog site, the problem is not that people don't read - witness the high circulation of popular newspapers -  but rather that publishers do not publish for them, nor bookshops target readers beyond the safe urban middle class. 

In celebration of the Book Fair, today I am therefore pointing to a book by a UCT colleague and partner in the PALM project, Adam Haupt, that does not target the popular readership Dave is talking about, but explores some of the issues of global media dominance that is part of the proplem. Published by the HSRC Press, this is a scholarly title, but provides an incisive and lively account of the ways in which global coroporate media interests dominate and appropriate 'aspects of youth, race, gender, cultural expression and technology for their own enrichment - much to the detriment of all society.' However the real appeal of the book is not only the study of how this appropriation works, but also of how, in a country like South Africa countercultures like that of the hip-hop activists in the Cape Flats of Cape Town in turn use new media and IP subversion to appropriate their own space. The book explores the MP3 revolution and Napster and digital sampling in hip-hop and explores alternatives to proprietary approaches to the production of culture and knowledge. This is a theorised account of dominant culture and subversion, drawing largely on Michael Hardt and Antonio Negri's concept of Empire. This use of theory, said UCT deputy-Vice-Chancellor at the launch a few weeks ago, is in itself an act of appropriation and subversion. We in the developing world, Martin argued, are not supposed to theorise; rather, we are required to provide the raw materials for the theorists of the North. 

The extra treat is that you can listen to a podcast on the book that includes discussion of the book and material from what was a very lively launch. The book is published by the HSRC Press, which launched the book at the Book Lounge in Cape Town, with perfromances from Burni,of the Cape Town feminist hip-hop group, Godessa and Caco the Noble Savage, a hip-hop activist with a wonderfully ironic take on the impact of globalisation that is the subject of the book. Being able to listen to the artists that Adam is talking about provides an added dimenstion to the reading of the book -a must-read accompanied by a must-listen. 

Given that this is an HSRC Press book, it is available full text online for free download. Print copies are available for sale in South Africa and in many other countries through print-on-demand distribution arrangements. So enjoy the Book Fair, but read Adam's book, too to get a critical perspectiveof the forces at play

Adam will be speaking in a panel at the Book Fair on Saturday afternoon - “Holding us together or pulling us apart?” The role of the South African Media in the creation and mutation of identities." 

Patents and open science - and that Bill again!

Today is the last day for submissions on the Draft Bill for IPR for Publicly Funded Research. So it was good to see a very balanced and insightful article, Sharing the fruits of science by Glerry Toomey in University Affairs on the question of patents and the value of open science. In contrast to the obsessive insistence of the South African Draft Bill on patenting everything that can be patented and on commercialisation as the only way of getting benefit from research, Toomey makes it clear that international science is now taking other directions:

We ... know that the social behaviour of modern science, and of the broader domain of innovation, is marked by a continual tug-of-war. At one end of the rope we find the forces of collaboration and sharing. At the other end are the instincts to compete and to protect one’s hard-earned intellectual property. While both kinds of behaviour lubricate scientific discovery and technological innovation, IP protection via patenting, with a view to future profits, has become a dominant trend in recent decades, particularly in the life sciences.

But now an international scientific counterculture is emerging. Often referred to as "open science," this growing movement proposes that we err on the side of collaboration and sharing. That’s especially true when it comes to creating and using the basic scientific tools needed both for downstream innovation and for solving broader human problems.

Patenting has a role to play, the article argues, but the mistake that has been made in recent years is a failure to 'distinguish between the research tools and basic knowledge' of science and the inventions with industrial application that the patent system was designed for.

The article tracks a number of open science projects and links these to the recognition of scientific discovery as the generator of public good. He quotes at length Dr Richard Jefferson, a biotechnologist now living in Australia, the founder of an international research unit in Canberra called CAMBIA, which promotes open science.

Dr. Jefferson distinguishes between the development of basic scientific tools and the application of those tools, between "discovery and invention." He sees scientific discovery as a social enterprise – not only serving as midwife to marketable inventions, but also delivering publicly valuable products for which markets or profit margins may be small. That includes alleviating poverty and hunger, especially in the developing countries, preventing or curing the diseases of the disadvantaged, and improving human stewardship of natural resources. So, while open science is described as a pragmatic way of doing research, it also has a social and ethical backbone. Terms like global public goods, common heritage of humankind and human rights recur in the literature on open science.

This would seem to be very much in line with the policy of the Department of Science and Technology, which argues for the need for research to contribute to national upliftment. On the other hand, Toomey claims, the commercialisation of public research, driven by the Bayh-Dole Act in the US some 27 years ago led to a 'filing frenzy' resulting in a tendency to privatise the tools and platforms of science.

This has not povided beneficial to the universities:

For universities in the technologically advanced countries, says Dr. Jefferson, the promise of getting fat cheques in the mail from patenting the fruits of their biosciences research projects has simply not materialized. He maintains that offices of technology transfer are "generally losing money" and that there’s ample evidence that private biotechnology enterprises, as a commercial industry, have fallen flat as well.

The article ends by suggesting that there needs to be a total rethink of the role of intellectual property, as a powerful tool for creating social value, through providing the platforms and sharing the improvements that result.

I would suggest that the South African Department of Science and technology needs to consider these arguments before enacting any legislation on IPR rights in university research. In promoting a Bill that looks backwards to 25-year-old US legislation, proven to have had many negative consequences; in insisting on a very wide-ranging definition of what research needs to be protected for patenting purposes, the Department would be locking the country into a backward-looking paradigm, just when exciting new prospects are available for delivering real development impact from public research.

Thanks to Peter Suber's Open Access News for drawing my attention to this article

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

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

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

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

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

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

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

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

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

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.


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