Intellectual Property

Intellectual Property Rights

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At the outset, one needs to clearly understand the term “ Intellectual Property Rights” or ”IP rights” as it is commonly referred to. These rights relate to those creations of the mind that qualify for protection in terms of the various IP laws enacted in our country, those international treaties that our government acceded to or the common law as developed by our courts.

Patents

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The deadline for filing a convention patent application in South Africa is 12 months from the earliest priority date. This period is extendable by an additional 3 months (i.e. up to 15 months from the priority date) upon application to the Registrar of Patents and upon payment of an additional fee. Some minimum requirements must be met to secure a valid filing date in respect of a convention patent application.

Designs Filing Requirements

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1. A South African design application can be filed within 6 months from the earliest of either the

  • Priority date; or
  • Release date – i.e. the date that the design was first made available to the public.

2. The South African Designs Act distinguishes between two types of design registrations:

  • Aesthetic design – i.e. a design having features of shape, pattern, configuration and/or ornamentation which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof
  • Functional design – i.e. a design having features of shape, pattern, configuration and/or ornamentation which are necessitated by the function that the article, to which the design is applied, is to perform

3. The following are required to secure a valid filing date in respect of a design application:

  • Full name(s) and registered address(es) of each applicant
  • Priority application number(s), country and date(s)
  • Release date (if applicable)
  • Type of article(s) to which the design is applied
  • Set of design drawings
  • International Locarno classification
  • Whether the design is to be filed as an aesthetic design or a functional design, or both
  • Power of Attorney – signed by the applicant (no legalization of formal documents is required)
  • A certified copy of the priority document.  If the priority document is not in English, a certified English translation is required.

4. South Africa has a so-called “deposit system” for designs – i.e. design applications do not undergo formal examination for the substantive registrability requirements thereof.

5. There is no provision for opposition to the registration of a design application.

6. Duration

  • Aesthetic designs have a maximum duration of 15 years; and
  • Functional designs have a maximum duration of 10 years – from the date of application, or the release date (whichever is the earliest), subject to payment of annual renewal fees from the third year after the application date or the release date, as the case may be.

7. South Africa is a member of the Paris Convention and of the Hague Convention.

INTELLECTUAL PROPERTY & COMMERCIAL

Mike du Toit is an admitted attorney of the High Court of South Africa, a qualified Trademark Practitioner and senior adjudicator of domain name disputes in terms of the Electronic Communications and Transactions Act, 2002 ( ECT Act) and regulations. He has more than 25 years’ experience in intellectual property law and is a former head of the trademark litigation department in John & Kernick and Bowman Gilfillan Inc and a founder and former head of the Intellectual Property Department of Edward Nathan Sonnenbergs. Mike served on the council of the South African Institute of Intellectual Property Law (SAIIPL) for several years, is a past President of SAIIPL and was chairman of their ADR committee that set up the domain name dispute resolution platform for the resolution of domain name disputes in terms of the ECT Act and regulations. He has extensive experience in the enforcement and protection of clients’ rights, not only in South Africa, but across the African continent and the rest of the world. He is ideally placed to accept conflict of interest referrals from colleagues.

Mike du Toit

PATENTS & DESIGN

Rina Gunter is a South African patent attorney who specialises in the drafting, filing and prosecuting of local and international patents, designs and trade-marks applications into South Africa and Africa. She is a metallurgical engineer with an advanced chemistry background, and has worked in the mining, mineral processing, water purification, food processing and agricultural chemistry technologies. In 2010 she was elected as one of three finalists in CEO Magazine’s Most Influential Women in Business and Government Awards in South Africa, Legal Sector.

Rina Gunter

Contact Us

Tel: (+27) 83 779 4298
Fax: (+27) 86 239 0909
email: mike@dutoit-ip.co.za

Creation of Intellectual Property Rights

At the outset, one needs to clearly understand the term “ Intellectual Property Rights” or ”IP rights” as it is commonly referred to. These rights relate to those creations of the mind that qualify for protection in terms of the various IP laws enacted in our country, those international treaties that our government acceded to or the common law as developed by our courts. Therefore, unless your cool idea falls within the ambit of the various vehicles that protect IP Rights, the idea may ultimately not be protectable.

The traditional and best known acts used for the creation of IP Rights are the Trade Marks Act no 194 of 1993, Patents Act no 57 of 1978, the Copyright Act no 98 advert7 of 1978 and the Designs Act no 195 of 1993. Apart from the Copyright Act, the other acts all require registration of the IP Rights to ensure successful protection and enforcement. The Copyright Act determines that you, as author of a copyright protectable work, are granted protection in terms of this Act if you comply with certain requirements. You do not need to follow a registration process. However, in the case of registration of copyright in a cinematograph film, you need to use the Registration of Copyright in Cinematograph Films Act no 62 of 1977 to obtain protection.

Apart from these IP Acts, IP Rights are also created in terms of the common law in so far as the protection of goodwill in a business goes. Nowadays the registration and use of domain names are an absolute requirement for businesses. Although not strictly speaking part and parcel of the IP Rights milieu, domain names often contain trademarks. The registration of the domain name creates certain rights for the owner, although the protection of the domain name is more often than not based on traditional principles of IP Rights protection.

These IP Rights, although intangible, are often the most valuable asset of an enterprise. One simply has to look at the value that is placed on international brands or the money spent lately to protect patents relating to the very competitive smart phone and tablet market. It is quite simple, unless you identify your company’s intellectual property assets, you cannot protect it, and unless you protect it, you cannot enforce it.

Enforcement and Protection of Intellectual Property Rights

Once you have created an IP Right, it serves no purpose unless you protect it. To commercially utilise the IP Rights that the State granted you, you need to enforce those rights against any unauthorised user. It simply means policing your market and taking steps against infringing use. The downside is that unless you do it proactively, you stand to lose the very monopoly that those rights grant you.)

All the IP Acts that create IP Rights provide for the enforcement of those rights. The principles are quite simple. The IP Rights holder may take steps to stop any unauthorised use of those rights. The same applies to your common law rights. Any unauthorised use amounts to infringement of your rights.

The IP Rights environment has changed in that a number of acts, unrelated to intellectual property, provide for the protection of IP Rights against unauthorised third party use. One simply has to look at the Companies Act no 71 of 2008 and the protection it grants to trademark owners in so far as company names go. The same applies to the Consumer Protection Act no 68 of 2008 in so far as it protects trademarks in business names, the Code of Advertising Practice that protects IP Rights under certain circumstances and the Counterfeit Goods Act no 37 of 1997 that provides protection against piracy of protected goods, to name but a few.

Once again, unless the IP Rights are protected, you cannot enforce them.

Commercial aspects of Intellectual Property Rights

Once your IP Rights have been identified and protected through a registration process or in terms of the common law, you can start commercially exploiting those rights. Whether your business model is that of a franchisor licensing your IP Rights and know- how to your franchisees, or whether you have a product or service that you sell under your own unique brand, the core of that business is the protected IP Rights. You need to protect your rights by way of solid licence agreements. Such an agreement would provide for the use of the IP Rights, royalties and termination and cancellation of the agreement.

The same principles apply when using a third party’s IP Rights. If your business model is based on being the local licensee of a foreign rights holder, one needs to give special attention to the terms of the licence so as to ensure that your rights are adequately protected. Although you are using a third party’s rights, your user rights should be based on proper protected rights so as to ensure that your market is not overrun by knock-offs or similar branded goods.

Our Trade Marks Act provides for the hypothecation of a registered trade mark by way of a deed of security. This enables a proprietor to offer its registered trade mark to any financial institution as added security for purposes of a loan or any structured deal. Any such lending bank would require that a due diligence be conducted on the trade mark that is offered as security. It would investigate the validity of the registration and would also require a valuation of the trade mark to determine its fair value.

An IP due diligence exercise is normally done when businesses do mergers and acquisitions, listings, restructuring of companies and re-financing. One cannot imagine that any business would not require such an exercise when acquiring a business where the business is a commodity-based and brand-driven company. It would be an essential tool in determining the actual worth of the IP Rights.

An essential part of such a due diligence is a full IP audit. It is often not limited to IP Rights that vest in South Africa. More often than not it includes IP Rights in the rest of Africa or even the world. This audit will identify and confirm all the rights claimed by the company, specifically the validity and ownership of those rights. In many instances, proprietors need to take steps to secure IP Rights, rights that they often thought they always had. This is specifically relevant in the case of copyright in computer software.

IP Rights, as intangible assets of a business, deserve its rightful place on the balance sheet and will enhance the net asset value of a business if properly managed.

Commercial IP services

The creation of IP Rights, the protection and enforcement thereof is but one aspect of the bigger picture when considering the full spectrum of intellectual property in a business. Unless the IP Rights are exploited, it is not fulfilling the role it can play in any business.

If a business is built around manufacturing and selling fast moving consumer goods, it is normally brand-driven. At the outset, the business has to ensure that the brands it is building, are protected through registrations in all the countries in which the goods are sold. All agreements entered into under these circumstances will be guided by one single principle, i.e. how do you protect your IP Rights?

All manufacturing agreements, distribution agreements and licensing agreements, to name but a few, have to protect those very rights. We advise on the IP Rights requirements of those agreements, provide strategic advice on the structuring of the IP Rights in those agreements and proper protection of the rights in those agreements.

We advise on intellectual property aspects of mergers and acquisitions, listings, restructuring of companies and re-financing. We advise on and conduct IP due diligences, conduct IP audits, provide strategic advice on the outcome of such due diligences and audits.

We advise on the impact of the Consumer Protection Act no 68 of 2008 on IP Rights and implement strategies to address the requirements of the Act.

The new Companies Act no 71 of 2008 introduced new requirements when it comes to company names. We advise on the steps to take to protect the adoption and use of trade marks in company names. We provide strategic advice based on the use of IP Rights in domain names, the management and control of domain names and the interplay between domain names, company names and business names.

Patents

 

A. PATENTS (You can also download this PDF file)Click here to download this file – Patents

  1. CONVENTION PATENT APPLICATIONS
  • The deadline for filing a convention patent application in South Africa is 12 months from the earliest priority date.  This period is extendable by an additional 3 months (i.e. up to 15 months from the priority date) upon application to the Registrar of Patents and upon payment of an additional fee.

The following minimum requirements must be met to secure a valid filing date in respect of a convention patent application:

  • Full name(s) and registered address(es) of each applicant
  • Full name(s) and residential address(es) of each inventor
  • Title of the invention
  • Priority application number(s), country and date(s)
  • The following additional documents are required to complete the filing requirements of a convention patent application:
Within 14 days of the national filing date
  1. Complete patent specification, claims and drawings.
Within 3 months of the national filing date
  1. English translation of the complete patent specification, claims and drawings, if the application was not filed in English.
Within 6 months of the national filing date (this period is extendable upon application to the Registrar)
  1. Form P3*, Declaration and Power of Attorney – signed by the applicant.
  2. Form P26*, Statement on the use of indigenous biological resource, genetic resource, traditional knowledge or use – signed by the applicant.
  3. A certified copy of each priority document.  If the priority document is not in English, a certified English translation is required.
Before acceptance (these documents must be filed in time for acceptance within 18 months, or on application to the Registrar, 21 months from the national filing date)
  1. Assignment of Invention* –signed by each inventor who is not an applicant.
  2. Abstract of the invention.
  3. Assignment of Priority Rights*, if the applicant is not the applicant in respect of the priority application

* No legalization of formal documents is required

South Africa has a so-called “deposit system” for patents – i.e. patent applications do not undergo formal examination for the substantive patentability requirements of inventions.

  • There is no provision for opposition to the registration of a patent application.
  • No excess claim fees, page fees or grant fees are payable in South Africa.
  • Patents in South Africa have a maximum duration of 20 years from the national filing date, subject to the payment of annual renewal fees from the third year after the national filing date.
  •  South Africa is a member of the Paris Convention and of the PCT.
  1. PCT NATIONAL PHASE PATENT APPLICATIONS
  • The deadline for filing a PCT national phase patent application in South Africa is 31 months from the earliest priority date.  This period is extendable by an additional 3 months (i.e. up to 34 months) upon application to the Registrar of Patents and upon payment of an additional fee.
  • The minimum requirement for a South African national phase patent application is the WIPO publication sheet, or the WO publication number, or the PCT international application number.
  • The following additional documents are required to complete the filing requirements of a PCT national phase patent application:
Within 3 months of the national phase filing date
  1. English translation of the PCT specification, claims and drawings, if the application was not filed in English.*
Within 6 months of the national phase filing date (this period is extendable upon application to the Registrar)
  1. Form P3**, Declaration and Power of Attorney – signed by the applicant.
  2. Form P26**, Statement on the use of indigenous biological resource, genetic resource, traditional knowledge or use – signed by the applicant.
  3. A certified copy of each priority document.  The priority document does not need to be translated into English.
Before acceptance (these documents must be filed in time for acceptance within 18 months, or on application to the Registrar, 21 months from the national phase filing date)
  1. Assignment of Invention** –signed by each inventor who is not an applicant.
  2. Abstract of the invention.
  3. Assignment of Priority Rights**, if the applicant is not the applicant in respect of the priority application

* The translation does not need to be certified

** No legalization of formal documents is required

  • South Africa has a so-called “deposit system” for patents – i.e. patent applications do not undergo formal examination for the substantive patentability requirements of inventions.
  • There is no provision for opposition to the registration of a patent application.
  • No excess claim fees, page fees or grant fees are payable in South Africa.
  • Patents have a maximum duration of 20 years in South Africa from the PCT filing date, subject to the payment of annual renewal fees from the third year after the PCT filing date.
  • South Africa is a member of the Paris Convention and of the PCT.
  1. PATENTABILITY REQUIREMENTS

For an invention to be patentable in South Africa, the invention must be –

  • ABSOLUTELY NOVEL – i.e. the invention must not have been made available to the public, anywhere in the world, in any manner (whether through written or oral description, through use, or in any other way) before the first patent application in respect of the invention is filed.
  • INVENTIVE – i.e. the invention must not be obvious to a person who is skilled in the particular technology to which the invention relates, if such a skilled person had the benefit of all prior art relating to the invention.
  • USEFUL – i.e. the invention must be capable of being used or applied in trade, industry or agriculture.

Technology Searches

It is not always easy to know for certain if an invention satisfies the novelty and inventiveness requirements for patentability.  However, we can conduct international technology searches for all prior technologies and disclosures relating to any invention.  Please contact us for a detailed quotation.

  1. NON-PATENTABLE INVENTIONS

The following are not patentable subject matter in South Africa:

  • Discoveries
  • Scientific theories
  • Mathematical methods
  • Aesthetic creations (e.g. literary, dramatic, musical or artistic works)
  • Methods of conducting business, playing games or performing mental acts
  • Computer programs
  • The presentation of information
  • Methods of treatment of the human or animal body through surgery, therapy or diagnosis practiced on the human or animal body
  • In the case of business methods and computer programs, the restriction only applies to inventions which relate to pure business methods and/or computer programs per se, not to inventions which merely make use of or incorporate business methods or computer programs.
  • In the case of methods of treatment of the human or animal body, the restriction typically only applies to in vivo treatment of the human or animal body, but does not exclude in vitro treatment, or a substance for use in a method of treatment.
  • First medical claims are allowed in South Africa – i.e. inventions relating to a known substance for use in a new method of treatment, provided the substance has not been used in any such method.  It is not yet clear whether second medical claims or Swiss-type claims will be enforceable in South Africa.
  1. PATENT PROCEDURE
  • Obtaining a patent, whether in South Africa only or also in other countries, is generally a two-fold process, which commences with filing a provisional patent application, including a specification, drawings and set of formal documents, at the South African Patent Office in Pretoria.  The provisional patent application has a maximum duration of 12 months, which is referred to as the “priority period”.
  • During the 12 month priority period, an applicant may freely disclose the invention, internationally, including licensing, assigning or otherwise trading with the provisional patent application.
  • At or before expiry of the 12 month priority period, the provisional patent application must be completed, either (i) in South Africa only (thus limiting the patentee’s monopoly rights to South Africa), or (ii) as one or more convention patent applications in foreign countries, or (iii) as a PCT application.  A patentee’s rights are ultimately limited to the specific countries and/or regions in which patent protection is procured.
  • South Africa has a so-called “deposit system” for patents – i.e. patent applications do not undergo formal examination for the substantive patentability requirements of inventions.
  • There is no provision for opposition to the registration of a patent application.
  • After a complete South African application has been filed and once all formal requirements have been met, the application is accepted by the Registrar of Patents, who then issues a Notice of Acceptance.
  • The accepted patent application is subsequently published in the South African Patent Journal within a period not exceeding three months from the acceptance date.  From the publication date the patent is granted in South Africa.
  • Patents have a maximum duration of 20 years in South Africa from the filing date of the complete patent application, subject to payment of annual renewal fees from the third year after the complete application filing date.
  • Please contact us for advice on how to obtain patent protection in other countries and jurisdictions.
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