Protection of Businesses Act, 1978
R 385
Intellectual Property Rights from Publicly Financed Research and Development Act, 2008 (Act No. 51 of 2008)RegulationsIntellectual Property Rights from Publicly Financed Research and Development Regulations, 200912. Conditions for offshore intellectual property transactions |
| (1) | A recipient may, subject to section 11 of the Act, and subregulations (2), (3) and (4) determine the terms and conditions for any non-exclusive licence to intellectual property governed by the Act that is fully owned by the recipient, outside the Republic or with an off-shore entity or person, or on an arms-length basis or for the purposes of promoting or facilitating the recipient's research and development activities. |
| (2) | Subject to the written consent of co-owner(s) of intellectual property co-owned by a recipient with co-owner(s), which may not be unreasonably withheld, a recipient may determine the terms and conditions for any non-exclusive licence outside the Republic or with an off-shore entity or person, to such co-owned intellectual property, on an arms-length basis. |
| (3) | NIPMO approval must be obtained for any licence in terms of which— |
| (a) | the consideration payable by a licensee to a recipient is not on an arms-length basis; |
| (b) | a recipient grants a licensee rights to commercialise of its intellectual property on a royalty free basis; or |
| (c) | the licensee falls into the categories referred to in paragraphs (a) and (b) and is granted a right to sub-licence on an arms-length basis in the case of paragraph (a) or for a royalty in the case of paragraph (b). |
| (4) | Each off-shore transaction must include the following statement – "The intellectual property under this transaction was created with support from the South African Government; ((under the contract number where applicable) awarded by (identify the Funding Agency or relevant government department) where applicable)) and is subject to the requirements of the South African Intellectual Property Rights from Publicly Financed Research and Development Act, 2008 and its regulations ("Act No. 51 of 2008"). The South African Government has certain rights to the intellectual property in terms of sections 11(1)(e), 11(2) and 14 of Act No. 51 of 2008". |
| (5) | A recipient must ensure that before granting an exclusive licence outside the Republic or to an off-shore entity or person, it is satisfied that the prospective licensee is capable of developing the intellectual property further where required and of undertaking commercialisation thereof, and in the case of co-owned intellectual property the recipient will do so in consultation with the co-owner(s). |
| (6) | An exclusive licence agreement must in addition to the statement in subregulation (4) include appropriate terms and conditions, in particular— |
| (a) | require that commercialisation of the intellectual property by a prospective licensee must ensure that the benefits of the intellectual property are accessible to the Republic on reasonable terms; |
| (b) | an irrevocable and royalty-free right of the State to use or have the intellectual property used on behalf of the Republic, for the health, security and emergency needs of the Republic in terms of the Act; and |
| (c) | NIPMO's rights in terms of section 14(4) of the Act, if the intellectual property is not commercialised within the reasonable period set out in the exclusive licence agreement. |
| (7) | A recipient must lodge an application in prescribed Form IP5 or IP6 with NIPMO for approval of an assignment of intellectual property offshore or grant of an exclusive licence, respectively, in terms of section 12(2) of the Act in compliance with the following conditions— |
| (a) | the application must detail compliance with section 12(2) of the Act and this subregulation (6); and |
| (b) | the recipient clearly articulates the benefits of the intellectual property to the Republic. |
| (8) | The application referred to in subregulation (7) must be lodged prior to initiating or concurrently with, where permitted, any application for final approval in terms of any other applicable regulatory approval in respect of off-shore intellectual property transactions. |
