Rosemary Wolson Intellectual Property Manager: UCT Innovation University of Cape Town

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Structuring Science &Structuring Science &Technology Collaborations:Technology Collaborations:

The Role &Perspective of aThe Role &Perspective of aDeveloping Country UniversityDeveloping Country University

Rosemary WolsonIntellectual Property Manager: UCT Innovation

University of Cape Town+27-21-650-2425/+27-83-784-3648

[email protected]


UCT Facts & FiguresUCT Facts & Figures• SA’s oldest university• ~20,000 students• ~2,000 academic staff• Research budget ZAR

360 million (~US$ 60 million)

• Research & Innovation Department– UCT Innovation

(contracts, IP, commercialisation)

• Faculties:– Commerce (and

Graduate School of Business)

– Engineering & the Built Environment

– Health Sciences– Humanities– Law– Science


Importance of Research Importance of Research Collaborations for UCTCollaborations for UCT

• Funding• Access to technology• Access to complementary expertise• Equipment• Capacity-building• Value adding


Features of UCT’sFeatures of UCT’sResearch Research

CollaborationsCollaborations• Location of collaborator– Local & international

• Type of collaborating organisation– Academic, industry, government, ngo, igo,

development agencies• Stage of research

– Early stage to applied• Nature of the outputs

– Innovative/cutting-edge science to ‘routine’ provision of services

• Funding– Externally funded, co-funded, self-funded


One Size Does One Size Does NotNot Fit Fit All…All…

• Wide range of collaborators and diversity of relationships– Different conditions attach

• Calls for a flexible approach• Within certain policy parameters

– Proactive research management and support therefore critical to ensuring that both UCT and its collaborators derive benefit out of these relationships


UCT’s ApproachUCT’s Approach• What’s important to us might not be the same

as what’s important to our collaborators• But benefits for both parties can still be

achieved• Compromises are necessary• Identify ‘dealbreakers’ for each party

– Requires clear policies, consistently applied– If unacceptable – walk away– If acceptable – reach common ground


Most Common Most Common Causes of DisputeCauses of Dispute

• Confidentiality & publication rights– Distinguish between information received from

other party & information generated in course of project

– Time-limited embargo on disclosure; right to review• IP ownership, access & use

– Licensing preferred over assignment, but approach depends on circumstances

– Minimum condition: royalty-free, perpetual license to university for teaching & research – fto


Avoiding DisputesAvoiding Disputes• Disputes more common during negotiation

than in implementation• Clear contracts that represent a true ‘meeting

of minds’– Deliverables, budget, timelines– Contracts signed off by university – but must be

understood by the researchers concerned• Dispute resolution provisions


Developing Country Developing Country IssuesIssues

• Unequal collaborations - not taken seriously– UCT inventors left off patent applications filed by

overseas collaborator ‘Drudge work’• Resource constraints make for a poor

bargaining position– Can’t afford to walk away– Limited capacity

• Choice of law and forum for dispute resolution– Litigating overseas could bankrupt the institution!

• Biopiracy’– Plant material, tissue collections, clinical data


PIIPA ProposalPIIPA Proposal• Public Interest Intellectual Property Advisors

– www.piipa.org• Proposal for a Facilitation, Mediation &

Dispute Resolution Network• Focus on developing country IP issues,

including traditional knowledge– Design culturally appropriate negotiation process– Facilitate negotiations– Resolve disputes

• Is there a need?• Appropriate partners – WIPO?


Thank You!Thank You!

Documents

Rosemary Wolson Intellectual Property Manager: UCT Innovation University of Cape Town