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There was a time when Non Disclosure Agreements (NDA’s) were considered a mark of the cognoscenti but now their popularity is waning as the perception of their utility plummets.

While some remain concerned that their “ideas will be stolen” perhaps because they have so few of them, increasingly investors and innovators are realising that “an un-executed idea is practically worthless” and “ideas have no value, only execution matters“.

Have you noticed how the insistence on an NDA increases in direct proportion to the banality of the information to be locked down? A venture capitalist capped that with the story of the unsolicited applicant for funding who told him that the “idea” was so secret that the applicant would not be able to disclose it even after the funding had been received.

Which explains the rise of the Compulsory Disclosure Agreement. The next time someone insists you sign an NDA just to talk to them insist that they sign a CDA. Here is a CDA you can use.

Compulsory Disclosure Agreement

Definitions

Information means all information including but not limited to all know how, technical information including know how, data design and algorithms, financial information, operational planning, information relating to staffing and employment, product information, trade secrets, ideas, emotions and dreams (both diurnal and nocturnal) however expressed whether recorded by any means including digital data, oral, or by conduct.

Intellectual Property means any creation of the mind that is capable of being protected by law from use by any other person in terms of intellectual property law anywhere in the world and includes patentable inventions, and copyright, designs, trade marks, plant breeders rights and the like

Disclosure means publication via teh Intertubes, through broadcast media, or through publication via a periodical.

Discussions

1. The Parties intend to conduct discussions and enter into this agreement to govern the disclosure of information during the discussions.

2. Each party shall be obliged to disclose all information relevant to, or referred to in the discussions. The disclosure shall be by whatever means are necessary so that the information is readily available for use by third parties.

3. To give effect to clause 2 above parties shall disclose information using open formats, and free of technical protection measures.

4. To give effect to clause 2 above parties shall grant an open licence to all intellectual property relevant to or referred to in the discussions.

5. Parties shall ensure that all their employees, agents and 3rd party contractors disclose all relevant information as required by clause 2 above.

6. Parties need not disclose information where a court or other impartial official tribunal has prohibited disclosure or further disclosure; or when another party to the agreement has already disclosed the information

7. A party must confirm the origin and accuracy of information disclosed by it to the other parties to agreement and third parties but need not confirm information disclosed by other parties.

Duration

8. This agreement shall enter into force on the date of signature, or should the agreement be signed on more than one date then the latest date signed.

Revocation

9. The requirement of disclosure shall persist until revoked by written agreement of the parties, or the expiration of twenty four (24) months from date of signature hereof. All information which has been disclosed by a party in terms of this agreement shall remain disclosed. On revocation or expiration clauses 4,6 and 7, and the definitions shall survive termination and remain in force and effect.

No Further Agreements

10. This agreement does not require any party to the agreement to enter into any further agreement with the other parties to the agreement or to any third party except to effect the obligation to disclose set out in this agreement. In particular the parties shall not be obliged to enter into any agreements requiring the sale of goods, the letting or hiring of goods, payment for services or the loan of any money or moveable property.

Whole Agreement

11.This agreement constitutes the whole agreement between the parties, no amendment or variation thereof shall be of any force or effect unless reduced to writing and signed by both parties. No oral or other written agreements or communications which require or relieve parties from the obligation of disclosure set out in this agreement shall be of any force of effect.

Signature

Signed at ___________________ (place of signature) this __________day (date) of _______(month and year) by _______________(signature) _______________________ (and full name) duly authorised to act on behalf of __________________(name of party)

Signed at ___________________ (place of signature) this __________day (date) of _______(month and year) by _______________(signature) _______________________ (and full name) duly authorised to act on behalf of __________________(name of party)

The Intellectual Property Rights from Publicly Financed Research and Development Act 2008 has caused some confusion amongst educators. Some people have suggested that this Act applies to all intellectual property which could be regarded as publicly financed. Some go even further and claim that any creation by someone employed at a government supported school or university is covered by the Act.

These claims are wrong.

To explain why I start with a brief plain language description of what the Act does and does not cover, followed by a longer legal analysis.

What the Act covers:

> the Act applies only to research and development, and so not teaching;
> the Act applies only to research and development funded by a government agency that funds research and development such as the National Research Fund;
> the Act specifically does not apply to the research supported by government scholarships or bursaries even if it is from a funding agency which don’t get other government funding;
> the Act specifically does not apply to conventional academic copyright works such as handbooks;
> the Act applies to institutions which are defined as Higher Education institutions and government funded research councils listed in the Act;
> the Minister of Science and Technology must follow a specific procedure to extend the Act to other institutions, the Minster hasn’t extended the Act to any other institutions.

There is no basis in the Act for the claim that the Act covers educational activities or has anything to do with schools.

What does the Act say:

The Intellectual Property Rights from Publicly Financed Research and Development Act 2008 applies to only to publicly financed research:

“Application of Act
3. (1) This Act applies to intellectual property emanating from publicly financed research and development:”

The Act defines publicly financed research and development:

“publicly financed research and development” means research and development undertaken using any funds allocated by a funding agency but excludes funds allocated for scholarships and bursaries”

The Act defines also defines funding agency

‘“funding agency” means the State or an organ of state or a state agency that funds research and development‘

Research is not further defined and must therefore bear its ordinary dictionary definition which does not include education.

Thus far the only state agencies which finance research and development are under the control of the Minister of Science and Technology. Section 3 also regulates the application of the Act to institutions:

Institutions are defined in the Act as follows:

‘“institution” means
a) any higher education institution contemplated in the definition of “higher education institution” contained in section I of the Higher Education Act, 1997;
(b) any statutory institution listed in Schedule 1; and
(e) any institution identified as such by the Minister under section 3(2);‘

Schedule 1 refers to CSIR, Mintek and other statutory research councils.

Section 3 (2) requires that in order for the Act to be extended to an institution that affirmative steps are required from the Minister
of Science and Technology:

‘3(2) (a) Subject to paragraph (b), the Minister may, in addition to the institutions to which this Act applies, by notice in the Gazettf’, identify any other institution to which this Act applies if he or she is satisl1ed that the institution may develop intellectual property from publicly financed research and development.
(b) Any identification contemplated in paragraph (a) must be done with the concurrence of the Minister responsible for the institution concerned‘

Therefore according to the rules of statutory interpretation; expresio unius exclusio alterius because there is a specific procedure to extend the operation of the Act to institutions it cannot be extended automatically. Extension can take place only according to the specified procedure.

Therefore there is no basis in the Intellectual Property Rights from Publicly Financed Research and Development Act 2008 for a reading that the Act applies to schools, or indeed to the teaching efforts of universities, or any other government created content,
much of which is automatically in the public domain by virtue of section 12 (8) of the Copyright Act 1978.

Its important to note that the Act does not apply to copyright in the most common outputs of research, specifically scholarly writing such as theses in universities, although it could be read as prohibiting disclosure of such research output while a determination is made whether the research could be patented. This is apparent from the definition of intellectual property in the Act:

‘“intellectual property” 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 copyrighted 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;‘

According to the canons of statutory interpretation this explicit exclusion precludes a strained reading of the definition of intellectual property being extended to copyright works used for teaching in universities even if that strained reading were to be adopted in the face of the plain meaning of research. An alternative construction of the definition of intellectual property is that it excludes all purely copyright works, refered to as “coprighted (sic) works” in the definition. The point of the such provision would be to offer a rationale for the exclusion, and possibly to qualify that where other rights, such as design or patent apply to the same material, that those are not excluded from the operation of the Act, but instead constitute an activity different to the usual course of academic business. In other words this construction would require that it is not necessary for a thesis with diagrams which are simply descriptive to register those diagrams as designs unless those designs constituted the designs for a new device proposed by the researcher, and thus represent something outside the ordinary course of scholarly activity.