Technology Transfer & Commercialisation

Intellectual Property Rights (IPR) Act

Publicly financed research and development according to the IPR-PFRD Act means research and development undertaken using any funds allocated by a funding agency but excludes funds allocated for scholarships and bursaries. For a definition of what is regarded as research and development see Guideline 1 of 2011 (available at www.nipmo.org.za)

The IPR Act (No. 51 of 2008: Intellectual Property Rights from Publicly Financed Research and Development Act, 2008) was enacted on 22 December 2008 and came into effect on 2 August 2010. The Act applies exclusively to IP created after its commencement date (from 2 August 2010 onwards). Importantly, the IPR Act also extends to improvements (referred to as foreground IP) on existing IP (referred to as background IP) that was publicly financed and resulted from research and development (R&D) conducted after 2 August 2010. In such cases, only the improvements are subject to the IPR Act.

The implementation and interpretation of the Act are guided by the Regulations issued under Section 17 of the Intellectual Property Rights from Publicly Financed Research and Development Act, 2008 (Act No. 51 of 2008), as well as NIPMO Practice Notes and guidelines.

Intellectual Property according to the IPR Act means, any creation of the mind that is capable of being protected by law from use by any other person, whether in terms of South African law or foreign intellectual property law, and includes any rights in such creation, but excludes copyright works such as a thesis, dissertation, article, handbook or any other publication which, in the ordinary course of business, is associated with conventional academic work;

Commercialisation is the process by which any intellectual property emanating from publicly financed research and development is or may be adapted or used for any purpose that may provide any benefit to society or commercial use on reasonable terms, and ‘‘commercialise’’ shall have a corresponding meaning;

Rights of IP creators to benefit sharing

In accordance with the act, creators of intellectual property arising from publicly funded research and development are entitled to a share of the benefits derived from the commercialisation of their work. This provision ensures that inventors, researchers, and contributors receive fair recognition and financial rewards for their innovations. At Mintek, we are committed to upholding these rights, ensuring that our IP creators are duly rewarded through equitable benefit-sharing arrangements.

Conditions for Intellectual Property transactions

The act mandates that any transactions involving IP developed through publicly funded research must adhere to specific conditions to ensure that the IP is managed and commercialised in a manner that maximises public benefit. These conditions include obtaining appropriate approvals, ensuring that the IP is used effectively to drive innovation, and that all transactions align with national interests. Mintek ensures compliance with these conditions, facilitating IP transactions that are transparent, fair, and beneficial to all stakeholders.

South African Patents Act, 1978 (Act No. 57 of 1978) as amended; governs the filing, examination, and enforcement of patents in South Africa.

Identifying an invention

Before determining whether an invention is patentable, it is necessary to establish whether it is indeed an invention. An invention consists of a product or a process. A product is could be like equipment, a chemical compound, circuitry or a system. A process includes a series of steps that do not necessarily result in the formation of a product.  An invention can comprise of both a product and a process. Identifying the technical problem that is intended to be addressed by the subject matter of the proposed invention can be useful to identify aspect that demarcate technological benefit associated with the invention. An invention must progress beyond existing/ present technology. Normally, inventions encompass existing technologies, it is important to clearly outline the novel elements and extended features embodied in the invention.

Technical Character, Completeness, Feasibility, and Repeatability

Patentable inventions must exhibit a “technical character” and involve a “technical activity.” A creation is of technical character if it pertains to an intellectual human creation within the industrial, mechanical, practical arts, or applied sciences. Technical activity involves applying human intellect to control nature’s forces and building blocks to produce a repeatable result, either in the form of a product or process that is practically useful.

Additionally, an invention should be complete. An invention is completed when its inventor has discovered the interrelationship between the means employed and the result intended by the invention. This identification should allow a person skilled in the art to implement the invention by following the inventor’s instructions.

Feasibility refers to the invention’s ability to achieve its intended objective. If the means provided do not achieve the intended function, the invention lacks feasibility and it subsequently lacks technical usefulness. The intended function must be achievable consistently, not by chance, ensuring that the same results are obtained each time the invention is performed as instructed. The primary disqualifier for patentability is the failure of the proposed invention to meet the “technical character” requirement.

Scope of Protection: Patents protect new inventions or processes that offer a new way of doing something or provide a technical solution to a problem. In Mintek's context, this could include innovative processes in mineral extraction (flow sheets), refining technologies, or new materials.

A valid patent may be granted for any invention that meets the patentability criteria: it must be new, involve an inventive step, and be applicable in trade, industry, or agriculture.

Once a technology is validated to meet patentability requirements, the next step is to evaluate it against previously disclosed inventions and technologies, collectively referred to as the “state of the art.” This comparison assesses the disclosed invention's novelty, inventiveness, and usefulness. The state of the art comprises of; all matter made available to the public, matter found in patent applications and inventions used secretly although on commercial scale. The act states that an invention used secretly and on a commercial scale within the Republic shall form part of the state of the art in respect of that invention.

Application and registration

In South Africa, the registration of a patent involves several key steps. First, the applicant must prepare and submit a detailed patent application, including a clear description of the invention, claims, and any necessary drawings, to the Companies and Intellectual Property Commission (CIPC) along with the required fees. South Africa does not conduct a substantive examination; instead, patents are granted based on meeting administrative requirements. The application is then published in the Patent Journal for any potential objections. If no objections arise, the patent is granted and registered, conferring exclusive rights to the inventor.

For international protection, applicants can use the Patent Cooperation Treaty (PCT) process. The PCT provides an examining system that assesses the patentability of the invention, offering a preliminary search report and written opinion on its potential in member countries. This process simplifies and streamlines the procedure for seeking patent protection across multiple jurisdictions. Alternatively, a conventional application can be filed directly in each country where protection is sought, following the specific procedures of each jurisdiction.

Duration: Patents typically last for 20 years from the filing date, subject to the payment of maintenance fees.

South African Designs Act, 1993 (Act No. 195 of 1993) governs the registration and protection of industrial designs.

Scope of Protection: Industrial designs protect the aesthetic aspects of Mintek's products, such as the shape, configuration, pattern and/or ornamentation of a piece of article of manufacture.

A registered design right is a form of intellectual property protection for the aesthetic or functional features of a manufactured article. This protection covers the shape, pattern and configuration for functional designs, where the latter are extended to ornamentation for aesthetic designs. An article of manufacture refers to a tangible product or object that is produced through a manufacturing process. To be eligible for registration, a design must meet specific requirements: it must be new and original, for aesthetic design have an individual character, and be applied to or incorporated into an article of manufacture. For functional design,

In South Africa, to register a design, it must be new and not previously disclosed to the public before the filing or priority date (novelty). The design must originate from the creator and not be a copy of existing designs (originality). For aesthetic designs, it must have a distinct visual impression and not be commonplace (individual character). For functional designs, it must be applicable to an article of manufacture and capable of industrial reproduction (industrial application).

Application and registration

To apply for a registered design in South Africa, an applicant must prepare a detailed representation of the design, including drawings or photographs, and a description of its features. The application, along with the necessary forms and fees, is then submitted to the Companies and Intellectual Property Commission (CIPC). The CIPC examines the application to ensure it meets legal requirements such as novelty and originality. Once approved, the design is published in the Designs Journal, allowing for any objections. After the publication period and resolution of any objections, the design is registered, granting exclusive rights to the owner. Anyone, including individuals, companies, or legal entities, can apply for registration. The proprietor refers to the person or entity that holds the rights to the registered design and is responsible for managing and enforcing those rights.

Duration: In South Africa, protection is afforded to aesthetic designs for a period of 15 years, and to functional designs for 10 years. Registered designs have to be renewed annually before the expiration of the third year, as from the date of lodgement.

South African Trademarks Act, 1993 (Act No. 194 of 1993) governs the registration, protection, and enforcement of trademarks in South Africa.

Definition: A trademark identifies the services or goods of one proprietors and distinguishes it from the goods and services of another. It can include a word, name, symbol, expression, smell, hologram or design or combination words and a device.

Scope of Protection: Trademarks protect the brand identity, including names, logos, and slogans associated with Mintek’s products and services, ensuring that these identifiers are not used without permission by others.

Before applying for registration of a trademark, an applicant will usually conduct a registrability search of the register of trademarks to determine whether there are any confusingly similar or deceptively similar trademarks, which could present an obstacle to the registration of the proposed mark. If the proposed mark is available for registration, the proprietor may go ahead and apply in the relevant class of goods and/ or services they plan to or are trading in. The registrar will examine the application, and notify the applicant of the decision. If accepted, the trademark will be advertised in the patent journal.

Duration and Maintenance: To maintain enforceable trademark rights, a proprietor must renew trademarks every 10 years by paying renewal fees. Failure to do so will result in the removal of the trademark from the register. The proprietor must also ensure that they use the trademark for which the goods or services are registered, or the mark may be removed from the register for non-use, if not used in accordance with the register this could result in breach Explore our portfolio of ground-breaking innovations, available for commercialisation with flexible licensing terms tailored for successful implementation of condition/s.

Trademark exploitation

Traditionally a trademark was protected as part of the good will of the business trading in the goods for which the mark was used, I hence the term “Badge of origin”.t was not permissible to licence, assign or transfer the trademark without the associated goodwill. A trademark as a "badge of origin" signifies that the trademark identifies the source of a product or service, distinguishing it from others in the marketplace. It assures consumers that the goods or services bearing the trademark originate from a specific proprietors, ensuring consistency in quality and reputation. Today, trademarks have evolved beyond merely representing a company's goodwill. They are now valuable standalone assets with inherent worth, capable of commercial exploitation.

Licensing

A trademark license is an authorisation from the trademark owner (licensor) that allows another party (licensee) to use the trademark, while ownership remains with the licensor. There are three types of licenses: a non-exclusive license allows the licensor to grant the trademark to multiple parties, such as a clothing brand licensing its logo to various manufacturers; an exclusive license gives only the licensee the right to use the trademark in a specific territory or market, like a software company granting exclusive rights to a distributor in a particular country; and a sole license permits both the licensor and the licensee to use the trademark, with no other licenses granted, as seen when a designer allows a single retailer to sell their products while retaining the right to sell directly.

Assignment

The rights to a registered trademark can be assigned or transferred through an agreement, either with or without the associated goodwill of the business related to the goods or services for which the trademark is registered. This means a trademark can be assigned for all or only some of the goods or services it covers. Additionally, even trademarks that are part of a pending application can be assigned or transferred. However, trademarks that are registered as associated trademarks must be assigned or transferred together to prevent confusion or deception. For example, if Mintek were to assign the rights to its NICMeR™ membrane technology trademark, they could choose to include the associated goodwill and assign the trademark for all the related water treatment applications, or just for specific uses, while ensuring that any associated trademarks are transferred as a group to maintain clarity and avoid misleading the market.

Hypothecation and Attachment

A registered trademark can be used as collateral for a debt through a deed of security. This deed must be filed with the Registrar, who will then update the register to indicate that the trademark has been pledged as security. For example, if Mintek needed financing for expanding its operations, it could use the trademark for its NICMeR™ membrane technology as security for a loan. The deed of security would be lodged with the Registrar, who would endorse the trademark register to show that the NICMeR™ trademark is hypothecated as collateral for the debt.

South African Copyright Act, 1978 (Act No. 98 of 1978) governs the protection of literary, musical, and artistic works, among others.

A copyright is an exclusive right granted by law for a limited period to an author, designer, creator etc. for his/her original work. For a work to be eligible for copyright protection, it must be original and be reduced to material form. The following works are eligible for copyright in South Africa (in the Republic of South Africa).

• Literary works e.g. books and written composition novels.
• Musical works e.g. songs.
• Artistic works e.g. paintings and drawings.
• Cinematograph films e.g. programme-carrying signal that has been transmitted by satellite.
• Sound recordings.
• Broadcasts e.g. broadcasting of films or music.
• Programme-carrying signals e.g. signals embodying a program
• Published editions e.g. first print by whatever process.
• Computer programs.

Scope of protection: Copyrights protect original works of authorship, such as research publications, software developed by Mintek, and possibly educational materials or databases created for industry partners.

For copyright protection, certain requirements must be met, including specific inherent features of the work. These features include originality (the work must be the result of the creator's own skill and effort), material form (the work must be fixed in a tangible medium), and it must be created by a qualified person (such as a commercial entity or individual eligible for copyright protection). Additionally, there is a proprietary requirement, meaning the creator or the commissioning party holds the copyright.

The idea-expression dichotomy is a key issue in copyright law, which distinguishes between the idea itself (which cannot be copyrighted) and the expression of that idea (which can be copyrighted). For example, if Mintek develops a novel process for purifying water using its NICMeR™ membrane technology, the idea behind the process cannot be copyright protected. However, the specific documentation, designs, and written materials that describe the process in detail, once fixed in a tangible form, would be eligible for copyright protection, as long as they are original works created by a commercial person within Mintek.

Duration: Copyright typically lasts for the life of the author plus 50 years after the death of the author in South Africa.

After an author’s death, copyright is inherited by their heirs or beneficiaries, or transferred according to their will or intestate succession laws. During the 50-year period following the author’s death, these heirs or representatives manage the rights, including reproduction, distribution, performance, adaptation, and royalty collection. Once this period expires, the work enters the public domain, allowing free use by anyone without permission or payment.

Trade Secrets: Protect confidential business information. This includes proprietary processes, techniques, formulas, designs, practices, business strategies and operational data developed at Mintek. These are not publicly available and provide a competitive advantage to a business.

Requirements for Trade Secrets

To qualify as a trade secret, the information must:

• Be kept confidential and not be generally known or accessible to the public
• Have economic value due to its secrecy
• Be protected by reasonable efforts, such as confidentiality agreements and security measures such as, i.e. access control, encryption, secure file sharing.

Scope of Protection: Trade secrets protect confidential business information including. Trade secrets are across the company divisions and therefore necessitating a clear companywide Tradesecrets protection strategy.

Protection and Benefits

In South Africa, trade secrets are protected under common law through confidentiality agreements and internal controls. Non-Disclosure Agreements (NDAs), employment contracts, robust security measures, and regular employee training to safeguard this critical information. By protecting tradesecrets, Mintek maintains its competitive edge and strengthens its commercialisation efforts.

Defence against unauthorised use

If a trade secret is misappropriated, Mintek can pursue legal action. The court process involves establishing that the information qualifies as a trade secret, proving that it was unlawfully used or disclosed, and seeking remedies such as injunctions or damages. The court carefully evaluates whether the trade secret was kept confidential, its economic value, and whether Mintek took reasonable measures to protect it. This legal recourse ensures that Mintek’s valuable assets are defended against unauthorised use.

Duration: Protection lasts as long as the information remains confidential and sufficient measures are taken to prevent access to the public through any means.

The purpose of this form is to capture key details from inventors or creators regarding any new intellectual property (IP) they have developed. It requires information about the invention's technical aspects, the inventors involved, and the research leading to the discovery. The goal is to record sufficient technical and legal information for Mintek to assess the invention’s novelty, potential patentability, and overall IP protection strategy. It serves as the initial step in the process of formalising and securing the IP.

The Early Business Case form focuses on assessing the commercial potential of the invention or technology. It captures market analysis, potential applications, industry needs, and competitive landscape. The form also explores the technology’s readiness for the market, potential commercialisation pathways, and the benefits it could provide to Mintek or external stakeholders. This helps in determining whether to move forward with further development and commercialisation efforts.

The Trademark Disclosure form is intended for cases where a brand name, logo, or other distinguishing marks have been developed to represent a product, process, service, or technology. It collects information related to the proposed trademark, including its purpose, intended use, market sector, and uniqueness. This helps in evaluating whether the mark can be registered and protected under trademark law, as well as its potential role in branding and marketing strategies.