The South African patent system is governed by the Patents Act, 1978. The Patents Act gives protection to patents for inventions (including patents of addition). The absence of novelty spoils a patent absolutely in South Africa and protection is refused to obvious inventions. Unless a complete specification is filed in the first instance, a priority date is established by a provisional patent application accompanied by a provisional specification. Subsequently, Applicants deciding to pursue protection thereafter must file a fresh complete patent application accompanied by a complete specification. An Applicant must submit the complete patent application within fifteen months of the date of filing of the provisional application, claiming priority from the latter.
Examination is to ‘form’ only and no examination on the merits takes place. The patent term is twenty years from the date of filing of the complete specification. After that, a patent must be renewed every year from the fourth, following the filing date. For more information please click here.
Trade Mark Prosecution
The Trade Marks Act, 1993 (as amended) governs the South African trade mark registration system. Distinctive signs of all kinds and descriptions which are capable of graphical representation are registrable as trade marks. The forty-two classes of goods and services of the International Classification is followed. The statute is generally compatible with the European Directive concerning trade marks. Further, it affords protection against unauthorised use of both identical and confusingly similar marks, in relation to the goods or services in respect of which a mark is registered and in respect of similar or dissimilar goods or services in defined circumstances. For more information please click here.
Copyright is conferred by the Copyright Act, 1978 without registration. The Act protects literary, artistic and musical works, sound recordings, cinematographic films, computer programmes, radio and television broadcasts, satellite transmissions and published editions. The categories of persons who are afforded copyright protection are defined in the Act and include foreign persons and incorporated bodies from member states of the Berne Convention.
The Designs Act, 1993 provides protection to aesthetic and functional designs through registration. Functional designs have features that are necessitated by the function which the article to which the design is applied. Aesthetic designs relate to designs applied to articles of manufacture because of the pattern, shape, configuration or ornamentation of the design. This is judged solely by the eye. Aesthetic designs must be new and original while functional designs must be new and not commonplace. For more information please click here.
Plant Breeder’s Rights
South Africa is the only country on the continent of Africa which is a member of the UPOV Convention. This has the effect that South Africa is bound to give protection to Plant Breeders’ Rights of nationals of other continents of the world, whilst the rest of the countries on the African continent are not. The rights cover propagating material for the relevant variety as well as harvested material, including plants. These exclusive rights consist of the production or reproduction of the aforementioned plant material. The conditioning thereof for the purpose of propagation. Moreover, the sale or any form of marketing thereof, as well as the exporting, importing and stocking thereof.
Protecting Biotechnological Intellectual Property and, and The Protection of Genetically Modified Crops (GMC's) is possible both under the Patents Act (No.57 of 1978) and/or the Plant Breeders’ Rights (PBR) Act (No. 15 of 1976).
The Counterfeit Goods Act provides enhanced means for dealing with counterfeit goods, especially at ports of entry to South Africa. The Merchandise Marks Act, 1941 deals with prohibited marks, the marking and covering of merchandise and false trade descriptions and marks.
Hahn & Hahn prides itself on its many international clients. To facilitate relations with our clients, we are able to communicate in English, German, French, Korean, Dutch, Polish and Czech. Hahn & Hahn also provides sworn translation services for translations from and to, French and German.
Intellectual Property Valuation
Apart from Capital Gains Tax (CGT) requirements, significant tax advantages may be realised when acquiring a business that owns intellectual property. In particular, the South African, UK and Australian tax regimes provide that any company purchasing intellectual property (excluding trade marks) is entitled to deduct the purchase price from its pre-tax earnings over the lifetime of the intellectual property. Please note that the company would still be able to depreciate the intellectual property whether or not it takes advantage of the above tax relief.
Whilst companies often spend considerable amounts on securing intellectual property rights, experience has shown that a proper valuation of such intellectual property, in particular, the technology aspects thereof, is rarely carried out. By properly reflecting the intellectual property as an asset in the balance sheet as required by the Generally Accepted Accounting Practices (GAAP), a company could significantly improve its shareholder value and benefit from an often neglected, yet important source of value creation.
Furthermore, the valuation of a company’s intellectual property will often bridge the gap that typically exists between the marketing and financial departments of large companies. For example, the marketing and R & D departments could justify their expenditure on advertising, research and promotional activities to the financial department by putting value to the IP arising out of their efforts.
Please note that our IP valuation service is available to clients all over the world.
Intellectual Property Litigation
Hahn & Hahn has over 65 years experience in all aspects of Intellectual Property litigation. This includes infringement and validity cases for patents, trade marks and designs. In addition we act for our clients in counterfeit goods, unlawful competition and trade secrets matters. Please contact Janusz Luterek ([email protected]) for further information in this regard.
Patent Infringement and Validity of Granted Patents
1.1 Infringement and Defence Thereto
In order to be successful in an infringement matter in South Africa, a patentee must show that an infringing device, system, apparatus, or method includes all of the essential integers of at least one independent claim of a patent.
In defence, an alleged infringer can deny infringement or rely on the invalidity of the patent. They may rely on any one of the grounds set out in Section 61 of the Patents Act 57 of 1978 and/or on use prior to the priority date of the patent in question i.e. the so-called “Gillette Defence”.
Furthermore, an infringer can counterclaim that the patent in question is invalid and request the Commissioner of Patents to revoke a granted patent.
The patentee may, where there is subject matter in the patent which could form the basis for a valid patent, apply to the Commissioner for leave to amend the patent. Resulting in the scope of the patent being reduced but the amended patent remaining valid. This may or may not get the infringer off the hook as the amended patent may still be infringing.
1.2 Time and Cost Factors Involved with Litigation
An infringement case is heard by the Court of the Commissioner of Patents, a division of the High Court. Either by way of Summons, where damages are sought and will require oral evidence to be led. Alternatively by way of Motion where only an interdict, whether urgent, interim, or final, is sought in which case the evidence is by way of Affidavit in most cases. An action brought by way of Summons may take anywhere from 6 to 18 months before it is heard by the court of first instance. On the other hand, an application by way of Motion may only take 3 to 6 months to be heard.
It is usual to appoint counsel (barristers) to assist in the litigation. Depending on the complexity of the matter, both a junior and a senior counsel may be appointed. Thus it is not unusual for a matter in which only a junior counsel is employed to cost between R 750 000 and R1 500 000 in the court of first instance. The same costs may be expected in each stage of an appeal.
In an infringement action, besides an interdict, the court may award damages, or reasonable royalties in lieu of damages, and a portion of the costs in the suit. Please note however that an order of costs usually only covers about 50 % of the actual costs incurred and are awarded at the discretion of the Commissioner of Patents.
In order to be valid, the claims of a South African Patent must be novel and inventive and all formal requirements ought to have been complied with.
The novelty requirement is an absolute requirement i.e. an invention as claimed should be new anywhere in the world, not just in South Africa.
Likewise, the inventive step requirement is an absolute one.
The South African Patent Office is a non-examining office and all patent applications which meet the formal requirements are granted.
It is not normal practice for Patent Attorneys to conduct patent searches for clients automatically. Clients specifically instruct their Patent Attorney to do so. The costs of the searches would often exceed the costs of preparing and filing the patent severalfold.
Furthermore, the South African Patent Office records are in complete disarray. It is not possible to conduct a reliable search for South African Patents at the South African Patent Office.
Yet further, international databases which may be searched, cover only the major countries of the world and have only scant information on South Africa, especially data prior to 1994. Thus, even an extensive international patent search does not have guaranteed accuracy. It is internationally accepted that, despite the high cost thereof, database searches have an accuracy of around 60%.
The validity of a granted patent may only be challenged by way of an Application for Revocation before the Court of the Commissioner of Patents. Depending on the complexity of the matter, both a junior and a senior counsel may be appointed. Thus it is not unusual for a matter in which only a junior counsel is employed to cost between R 750 000 and R 1 500 000 in the court of first instance. The same costs may be expected in each stage of an appeal.
Domain Dispute Resolution
Vanessa Lawrance, Janusz Luterek, and Victor Williams have been appointed as adjudicators on the ZA Domain Name Authority domain name dispute resolution panel. Alan Dunlop, Janusz Luterek and Victor Williams being appointed as Senior Adjudicators. For more information on lodging a dispute with the Domain Name Authority regarding a .co.za domain name, please see www.domaindisputes.co.za. Where we are not acting as adjudicators we are able to represent clients in such disputes.
For enquiries please click here.