Kelly Faul
Academics face unrelenting pressure to frequently publish their research findings to ensure they are on the cutting edge of their field of technology. These publications constitute an academic’s curriculum vitae and hence determine the individual’s position within the research environment, both locally and internationally.
These research outputs provide the institution with funding and the researcher with incentives, and are a major determining factor for funding agencies when considering the allocation of future funds. The role of publications in academia should not be overlooked or underestimated, especially as historically they have been a primary means for securing and retaining funding. “Publish or perish” has therefore become a reality for many academics.
The question thus follows: Is there an alternative to publish or perish that would be infinitely more sustainable, practically feasible and financially attractive within an academic environment? Furthermore, can one have the best of both worlds and enjoy the rewards of publishing, but at the same time utilise and commercialise the fruits of your academic labour? In other words, can one publish and still innovate to thrive?
The answer is a resounding yes, but the order in which these two events — to publish or to innovate — take place is critical.
The available protections
Let us consider what is generally required in order to utilise and commercialise the fruits of your academic labour. Typically, research and development (R&D) needs to be output driven, which primarily means that the R&D should be applied.
Applied R&D, by nature, will be geared to create a solution to solve a problem, for example, a new maize variety that is resistant to a certain pest that poses a threat to this staple crop, or a vaccine for treating HIV, or a motor vehicle with an improved carbon footprint. These new solutions to an existing problem constitute a creation of the human mind and are thus termed intellectual property (IP). Furthermore, these solutions are classified as an invention and may be the subject of protection by the law, either statutory or non-statutory protection.
Statutory protection is the form of IP protection that is the first prize when protecting your invention and ring fencing your technology. Examples include patents, plant breeders’ rights, designs or trademarks.
The reason they are first prize is that in the event that one qualifies for protection and is granted a monopoly, that monopoly excludes all others from “making, using, exercising, disposing or offering to dispose of, or importing the invention” so that, for example, the patentee enjoys the “whole profit and advantage accruing by reason of the invention”. And so one has a ring-fenced playing field that — provided you don’t infringe on anyone else’s rights — makes you free to exclusively utilise and commercialise your invention for the period the right is in force.
However, not all ideas meet the requirements for statutory protection and thus the second prize, which is not necessarily less valuable, is confidential information or trade secrets.
Consider that Coca-Cola has never patented the formulation of their soft drink. Rather, that information was kept out of the public domain and instead is guarded as a trade secret, treated as confidential within the business and protected by common law. The step of turning your IP into a product of the sort that has commercial value and not discarding the IP as a purely academic exercise determines whether one has achieved the goal of utilising and commercialising the fruits of your academic labour in the current context.
It is the requirements for obtaining statutory protection, or protecting your IP in general from the public domain, that dictate whether innovation must take place first or whether publishing comes first.
The requirements for statutory protection include that the creation of the mind must be new — in other words, there’s an absolute novelty requirement (except for some countries which recognise a novelty grace period). Novelty can be a very small improvement or change over that which is already known and may be as slight as changing the colour of a known product.
Consider the simplistic scenario where for as long as man has known, cars would only have been manufactured in the colour black. The idea to manufacture cars in an alternative colour, for example, red, would be a novel idea. Should the idea to paint black cars red have already been available to the public in literature, on the web, or any other forum, then the idea to paint the cars red would no longer be novel and the idea would not meet one of the requirements for statutory protection — and in particular, patent protection.
It thus follows that innovation must precede publishing in the chain of events, and then once the statutory right has been applied for, publication may commence.
Disclosure
Enter into this background the Intellectual Property Rights from Publicly Financed Research and Development Act (the IPR Act). The overriding aim of the IPR Act is to “provide for more effective utilisation of intellectual property emanating from publicly financed research and development”. In particular, the IPR Act requires that an IP creation is identified and disclosed. Only after analysis of this disclosure for possible statutory protection may researchers “publish their findings for public good”. It has thus become a legislative requirement to assess whether it is possible to innovate and only thereafter proceed to publish.
So how long will the disclosure procedure take and what are the financial implications thereof? Typically, the disclosure procedure will be regulated by an institutional office of technology transfer and should not take more than two weeks, depending on workload. Should they identify that the IP is of such value that it qualifies for statutory protection, then another two weeks will be required by the patent attorney, for example, to draft the specification for filing the initial application. So a reasonable delay of four to six weeks should be more than sufficient to kick the innovation part into action, whereupon the publication event can proceed, provided that the scope of the publication is the same or similar to that of the patent application and does not include any new or additional work. Once the innovation action is started, the National Intellectual Property Management Office (Nipmo) is required to provide incentives to the recipients of public funds, for example the institutions and science councils, and to the intellectual property creators, in other words the inventors themselves, for proactively securing IP protection.
In addition, the intellectual property creators and their heirs must receive a specific portion of the revenues that accrue to their institution from their intellectual property and this right must be reduced to writing and entered into by the two parties in the form of a benefit-sharing agreement. Finally, the institution is entitled to financial support from Nipmo for the costs incurred in obtaining and maintaining the statutory protection.
Innovate to thrive
It becomes clear that the government is not only advising researchers to innovate to thrive, but they are actually prescribing it where applicable. In an effort to create a smooth transition from the publish or perish to the innovate to thrive mindset, the government is offering incentives, largely financial in nature, while it is up to the recipients of public funds to change their mindset so that they qualify to tap into the incentives on offer.
It is thus clear that one can have their cake and eat it. Publication and innovation (and in particular patenting) are not mutually exclusive events. In fact publishing and innovation may exist symbiotically, provided the requirements for innovation (and in particular the requirements for registration for statutory IP protection) are met before publication takes place.
Kelly Faul is the head of the National Intellectual Property Management Office (Nipmo)