Licencing FAQ

Innovus helps Stellenbosch University inventors and researchers to commercialise their ideas and inventions by means of patenting, licensing and the formation of spin-out companies.

If you have a query regarding intellectual property concerning your research or research funding, Innovus can help to clarify these issues and assist you, together with the Division for Research Development at Stellenbosch University.

If you are an inventor at Stellenbosch University, Innovus can advise you whether your idea is patentable, and will apply for patents on your behalf.

If you have a commercial idea, Innovus can assist with the marketing and financial requirements of getting your idea to the market.

A patent is a monopolistic right granted by the state to an inventor and which confers upon the patentee the right to exclude other persons from selling, making, using or commercially exploiting the invention as he feels fit. This protection lasts for only 20 years provided that all formalities are complied with. (See the Patents Act No 57 of 1978).

Any product, process, method, device or a combination thereof or an improvement of any of the alternatives can be patented. A good patent agent will leave no stone unturned to describe the invention as any of the above-mentioned alternatives or a combination thereof, knowing that the wider the description the better it is protected. There is no fixed list of patentable ideas; however there are some inventions that are excluded from patentability such as medical methods of treatment, biological processes for the production of animals, or discoveries. (A discovery is not patentable since as a natural phenomenon it has not been created by the inventive mind of an individual – it has always been there, as opposed to an invention, which is a new and novel creation).

A mathematical formula can also not be patented since it represents a natural phenomenon. Computer programmes are normally protected by copyright. However, it is possible to patent certain aspects of computer programmes, such as algorithms or a process in the programme. Because this field is very specialised and highly competitive, it is advisable to consult a patent agent and not to rely on copyright protection alone for software programmes. The possible patenting of software is further discussed in FAQ 12.

There are three legal requirements for patenting an idea:

Novelty: An idea must be new. If it has been publically known or described in printed material before the application date, the idea cannot be patented. A discovery is not a new idea because as a natural phenomenon it was there all the time. Secret application of an idea also disqualifies it from being patented.

Nonobvious: The test for this requirement is as follows: if an expert skilled in the art and who is familiar with the ‘current state of the art’ related to the idea, and who, when confronted with the same problem, comes to the same solution and conclusion as the idea, then the idea is not patentable. Therefore a invention is deemed to involve an inventive step.

Utility: An invention must find application in industry, agriculture or commerce – it must add value and benefit society in some or other way. However, it is not a prerequisite that the invention must be a commercial success in order to fulfill this requirement.

An idea that complies to these requirements can be considered an invention and is patentable.

Before embarking on the process of patenting your idea, you should conduct a patent search to ensure that the same idea has not been patented before by somebody else. South African law requires no novelty search to be conducted before any patent is granted and therefore the Patent Office grants patents to all formally correct applications. The onus rests on any person who believes that he is the original inventor of an idea that was previously patented by somebody else, to prove this in court. This is opposed to the international situation in which the inventor must prove that the idea is novel by conducting a compulsory and extensive novelty search before any patent will be granted by such a patenting office.

This is an expensive exercise, but with the advantage of keeping your priority date given by the office where the provisional patent was filed, should the search be in your favour. Since a prior professional search is still recommended for South African patent applications, it is possible and advisable to do a preliminary search yourself on free search engines available on the internet before any patent agent is consulted. The South African Patent Office has no such facilities and South African searches must be done manually.

Europe: www.epo.org
Google Patents

“Anything that won’t sell, I dont want to invent” – Thomas Edison

It is necessary to consider market trends before a small fortune is spend to patent an invention. Find answers to these questions regarding your idea or product: Does it solve a problem? Is there a market for it and how large is the demand? What is the growth potential? Can it be manufactured competitively? What competitive products are there on the market? Will the market still be there after the incubation period? How long will it take to put the product on the market? How will the product be marketed and sold? To address these questions requires a professional approach and the following steps are proposed: Firstly it must be determined whether the invention solves some problems to a certain technical standard.
Also consult:www.fplc.edu

It is a specialist field and you should make use of a patent attorney. In terms of the Patents Act, only registered patent attorneys may file a complete patent application. Please contact the TTO for more information.

The following steps are prescribed by Stellenbosch University for staff and student who have developed a patentable idea in the normal course of their work or study at the university. The University believes that by following these steps the rights and interests of its staff, students, and that of the University, are protected at best. It is required of staff and students to disclose inventions according to their employment or study contract with the University.

1. Disclosure

Do a preliminary patent novelty search to put your mind at ease about the novelty of the idea. Complete the disclosure form inclusive of the management approval sections.  DO NOT YET obtain any signatures as the TTO allocates a reference number and also verify the information is all complete before it is circulated for signature via n online signature platform. Do inform your dean and departmental chairperson about the disclosure so that they are aware of the project. Email the completed (unsigned) disclosure to forms@sun.ac.za. Do note that the University bounds everybody involved in the disclosure form to the confidentiality agreement in the form.

2. Research Development and TTO

The Division for Research Development, in consultation with the TTO, do a preliminary assessment of the idea and both offices undertake to give feedback within days. The assessment will include a preliminary economical evaluation of the idea as well as a preliminary novelty search.

3. Patent Committee

The TTO in a project meeting will evaluate the submission and will decide whether the invention is protectable and has commercial potential.  You may be expected to present the technical merit at the project meeting. The TTO at its sole discretion after the due diligence will decide on the appropriate IP protection.

4. Feedback

The TTO gives feedback on the status of the disclosed idea within four weeks, unless otherwise agreed upon. This feedback will include an indication as to whether the University will proceed with the provisional patenting process, or any other means of protection. Prima facie unpatentable ideas will also be handed back at this stage, with the shortcomings being spelt out to give the inventor the opportunity to re-submit the idea. Renouncement of the intellectual property ownership by the University will only happen at a later stage, should the University elect not to exploit the idea itself.

5. Sophistication by TTO

Approved disclosed ideas are sophisticated by the TTO in close co-operation with the inventor, and strategies are developed to exploit the invention. This step also involves the development of a business plan, market research, financing alternatives and product refinement, but is not limited to this list.

6. Commercialisation

In the event that the technology will be commercialised through a spin-out company, the University of Stellenbosch Enterprises (Pty Ltd (USE)  and the TTO will get involved. USE is a private company owned by Stellenbosch University, who manage the business aspects of the intellectual property of the University and takes equity in the university spin-out companies.  The TTO will assist with setting up of the company and you will be provided with the “Start-up engagement terms” which sets out all you need to know about starting a company and the support the TTO and USE provides.

7. Division of nett income form the commercialisation of IP

The inventor and his department will benefit financially in accordance with the official IP Policy (Sec 6) 

The following alternatives are available for the commercial exploitation of patents:

The patent rights can be sold outright to an interested party who is in a better position to add value to existing products by utilising the patent, or to use it as a new product as supplement to their existing product line, or to develop a new marketable product. It is very difficult to assess the value of premature ideas and patents without any market history, and such patents are usually sold for a rather low fee.

The patent can be licensed to an interested party, preferably one who specialises in the particular field. It is important to negotiate for the payment of royalties that are based on turnover and not on profits, since companies can manipulate their profits and losses. A performance clause is also advisable, which will enable you to get the technology or patent rights back should the licensee not perform satisfactorily in exploiting the patent.

The patent can be exploited by the inventor himself. This is very complicated because the inventor is usually not skilled in the art of managing a business. It is important to realise that this is a business venture which requires a professional approach towards (a) a business plan, (b) the building of a technology infrastructure around the patent, (c) the addressing and implementing of logistical, management and operational action plans (including the manufacturing and marketing of the product) and (d) the financing of the venture. It is part of OIP’s services to asssist employee and student inventors with the exploitation of their inventions in this manner.

Partnerships can be concluded between financiers, developers or companies. A typical structure of such a partnership can be the founding of a company where every partner shares equity pro rate to the amount of value that he contributes or will contribute to such partnership. InnovUS is also dealing with such matters.

Agents can be appointed to market the patent. They often demand a high commision without carrying any substantial risk themselves. Therefore they are not necesseraly the best alternative for exploiting an invention. Beware of agents who demand up-front payments or commissions.

The Patent Cooperation Treaty (PCT) is an international treaty with more than 150 Contracting States. The PCT makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single “international” patent application instead of filing several separate national or regional patent applications. The granting of patents remains under the control of the national or regional patent offices in what is called the “national phase”.

Member states: https://www.wipo.int/pct/en/pct_contracting_states.html
PCT Timeline: https://www.wipo.int/export/sites/www/pct/en/seminar/basic_1/timeline.pdf

This question is the subject of many debates because of the high commercial value of software in the industry. The Patent Act is very clear in this regard and section 25(2)(f) states that no computer programme is patentable. However, sec. 25(3) leaves the door open for patenting in very limited cases. This provision has not yet been tested in our courts, and patent attorneys are there led by foreign court decisions when giving advice. In South Africa the problem is avoided because no formal patent search or investigation is required.

For software-related invention(s), if the invention is integral to a particular task or process, it may be considered as patentable. This answer is not adequate and for a better perspective on the problem it is necessary to have a look at USA court decisions where the following guidelines have evolved over recent years:

To be patentable subject matter, software-related inventions must still meet the criteria of being a process, product or device in its own right, as any other invention and therefore it must not just complement a ‘to be patented’ process. Because of the ambiguous definitions of courts regarding this requirement, the Patent Office of the USA has published the following guidelines to clarify the matter:

  1. “A computer or other programmable apparatus whose actions are directed by a computer programme or other form of software may be considered a “machine.”
  2. “A computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer is presumed to be an “article of manufacture.”
  3. “A series of specific operational steps to be performed on, or with the aid, of a computer is deemed a “process.” Detailed information on these guidelines are available here.

Courts have also made a clear distinction between broad algorithms and pure mathematical algorithms. The latter implies that the human mind is duplicated (“…claims were not patentable because they really distilled down to a mathematical algorithm representing a mental process that is not applied to physical elements or process steps.”) and is therefore not patentable. Mathematical methods are specifically excluded from patentable subject matter in the Patent Act.

Broad algorithms can be defined as “a fixed step-by-step procedure for accomplishing a given result, usually a simplified procedure for solving complex problems”, and are patentable. It is left to the courts to decide on this matter.

The distinction must further be made between software and computer programmes. The latter can be considered as a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. Software, on the other hand, is a broader term which can incorporate computer programmes, libraries, databases, and utilities.

Typical examples from USA case law are as follows:

Not patentable subject matter.

“System software”
“Algorithm for typesetting alphanumeric equations”
“Computer programme for the translation of natural languages”

Patentable subject matter.

“System software”
“Algorithm for typesetting alphanumeric equations”
“Computer program for the translation of natural languages”

All software programmes also find protection in the Copyright Act as a separate category and it is recommended to include the following note in each such a programme to have at least some kind of protection, should your patent application be rejected: Copyright © (YEAR) Author All rights reserved. where (Year) is the year of first “publication”. Further information on this topic is available here.

An idea with a good business plan has a better chance of succeeding than a brilliant patent without a business plan. If you want to patent your idea and develop it commercially, a business plan is absolutely necessary. The purpose of a business plan is to convince others to support your idea and unlock resources available to them in order to exploit your idea successfully. Financing or venture capital are typical examples of such resources and the people who make these decisions about the allocation of venture capital have strict requirements to convince them that your idea might possibly be a commercial success. Your business plan will probably also compete with similar plans for the same resources therefore a professional approach is the only way of dealing with competition.

A good business plan will include at least the following:

  • Introduction
  • Description of business (overview of industry, products, production processes)
  • The market (competition, size, clients, market trends)
  • Finances (income statement, expenses, cash flow statement)
  • Supporting documentation (marketing plans, etc.)

It will however be to your advantage if your projections are realistic because the people who will analyse your business plan are au fait with identifying unrealistic submissions. Even is you do not require the assistance of any other person or institution, it is still expedient to draw up such a plan. This exercise compels you to approach the whole idea strategically and consider all the options before you attempt something that is not feasible.

Very good software is available which can assist you to draw up business plans. The advantage of these programmes is that input values can be adjusted continuously to take different scenarios into consideration. OIP can assist staff and students at Stellenbosch University to draw business plans. The (former) SBDC has compiled Guidelines for Compiling Business Plans.

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