Intellectual property (IP) is a cluster of legally recognised rights associated with innovation and creativity – the works of the mind, as opposed to physical products, land and other tangible resources. Intellectual property is divided into two categories:
- Industrial property, which includes inventions such as patents, trademarks, industrial designs, and geographic indications of source, and
- Copyright, which includes literary and artistic works such as novels, poems and plays, films, musical works, artistic works such as drawings, paintings, photographs and sculptures, and architectural designs.
Legal protection of intellectual property is necessary to prevent others from making unauthorised use thereof to the detriment of the true owner, and to ensure that the true owner enjoys the full commercial benefit of his or her creative efforts.
Patents in South Africa are governed by the Patents Act 57 of 1978 as Amended (“the Act”).
In terms of the Act, a patent may be granted for any invention which is new, involves an inventive step and is capable of being used or applied in trade, industry or agriculture. A patent protects the underlying principle behind the invention and prevents third parties from making, using, exercising, importing, disposing of (e.g. selling) or offering to dispose of the patented invention.
Generally, inventions have a technical content and could be in the form of new articles or devices, equipment, methods, processes for producing or manufacturing a product, chemical substances and formulations.
Mathematical methods, scientific discoveries, business methods or methods of playing games, computer software and the presentation of information are not patentable inventions. This applies only to the extent that the invention applies to any of the above as such. For example: penicillin, a discovery, would not have been a patentable invention, however the use of penicillin as an antibiotic to cure bacterial infections would have been a patentable invention. Similarly, computer code as such is not patentable, whereas a server configured to perform various functions and interact with various systems or devices could constitute a patentable invention. In addition to this, methods of treatment or diagnosis practiced on the human or animal body as well as animal or plant varieties are not patentable inventions.
Registration
An invention is deemed to be new if it does not form part of the state of the art immediately before the date on which an application for a patent was filed. The state of the art comprises all matter available to the public, anywhere in the world, whether by written or oral description, or by use, sale or any other way. It is therefore imperative that an inventor does not make any public disclosures before filing a patent application. Public disclosures include publishing in journals, presenting at conferences, displaying information about the invention on a website.
In addition to being new, an invention must be inventive. This means that, when all relevant matter in the state of the art is considered, the invention cannot be seen as being obvious to a person skilled in the art if it is to be considered inventive. For example, the invention cannot simply be a combination of known features, but should rather produce a ‘synergistic’ (or unexpected) effect.
Finally, the invention has to be useful and not frivolous or contrary to any well-established natural laws.
If these criteria are met, an application for a patent may be made by the inventor or by any other person acquiring from the inventor the right to apply, or by both the inventor and such other person. Joint inventors are also allowed to apply. Thus a patent application may be filed in the name of an assignee (e.g. a natural person or a company), who has obtained a written assignment of the invention from the inventor. For example, Prof X from Microbiology is the inventor, but Stellenbosch University is assignee/applicant/patentee.
The patent application is usually accompanied by a provisional specification which should fairly describe the invention. A provisional specification provides an inventor with 12 months’ protection worldwide, provided that within that 12 month period either a South African complete or PCT patent application is filed. This effectively provides an inventor with 12 months in which to market the invention, attract investors and/or further develop the invention before having to decide in which counties protection will be necessary.
Term and Effect of a patent
The term of a patent is 20 years provided renewal fees are paid annually.
The term is calculated from the date either on which the South African complete application is filed or on which the PCT patent application is filed.
The effect of a South African patent is to grant to the patentee the right to exclude all other persons, in South Africa, for the duration of the term of the patent, from:
- making;
- exercising;
- using;
- disposing of (e.g. selling);
- offering to dispose of (e.g. advertising); or
- importing
the patented invention.
To obtain the above right in other countries, individual patent applications must be made in each respective country. This is typically done by filing a PCT application within 12 months of the filing date of the provisional application. A PCT application ‘buys’ the applicant an additional 18 months after which individual patent applications must be made in each respective country in which protection is desired.
Practical considerations
Patents can be useful in attracting investors by showing the invention to be worthwhile and can also act as an enabler to entering discussions/investment talks by providing recourse should ideas be stolen as well as clearly defining intellectual property ownership going into the discussions/investment talks.
A patent is a trade-off in that the invention has to be described to a sufficient degree such that it may be performed by anyone else. Given that patent protection expires after 20 years, consideration should be had as to whether or not the invention might better be kept a trade secret. For example, famous recipes are often kept as trade secrets such that, if kept secret, the recipe can be exploited indefinitely.
A patent is a right to exclude. Having a patent does not necessarily give the patentee the right to make, use, import, etc. the patented invention. For example, the making, using, etc. of an invention of a granted patent might actually infringe another granted patent.
South Africa is a patent registration country in that patents are not examined before being granted. This means that while a patent may be granted for an invention, the patent may not be valid for, for example, not meeting novelty or inventiveness requirements.
A registered design protects a design applied to an article, i.e. the appearance the article as it is judged by the eye. Registered Designs in South Africa are governed by the Designs Act 195 of 1993 as amended (“the Act”).
In terms of the Act, a design may be registered as a functional and/or aesthetic design if it is new and original (in the case of an aesthetic design) or new and not commonplace (in the case of a functional design).
An aesthetic design may be any design which is applied to any article, by whatever means it is applied, which has features which appeal to and are judged solely by the eye. The design may be for the shape, configuration, ornamentation or pattern applied to the article (or two or more of these purposes).
A functional design may be any design which is applied to any article, by whatever means it is applied, which has features which are necessitated by the function of the article to which the design is applied, is to perform. The design may be for the shape, configuration, or pattern applied to the article (or two or more of these purposes).
Registration
A design is deemed to be new if it is different from or if it does not form part of the state of the art immediately before the date application for registration thereof or the release date thereof, whichever is the earlier. The state of the art comprises all matter made available to the public, anywhere in the world, whether by written description, or by use or any other way.
An aesthetic design is original if it is the designer’s own work whilst a functional design is commonplace if it does not excite the interest of a person skilled in the art.
Designs for articles which are not intended to be multiplied by an industrial process are not be registrable under the Act. An industrial process can, however be broadly interpreted.
If the design meets the above criteria, an application for registration may be lodged by the proprietor of the design. The proprietor may be the author, a person for whom the author executed the design or any other person to whom ownership of the design has passed.
An application for a registered design must be accompanied by line drawings and should indicate whether the design is functional or aesthetic. Furthermore, the design should be classified according to subject matter.
Term and Effect of a patent
The duration of registration, provided renewal fees are paid annually, of:
- an aesthetic design is 15 years;
- a functional design is 10 years
from the date of registration thereof or from the release date thereof, whichever is earlier.
The effect of registration of a design is to grant to the registered proprietor in South Africa, for the duration of the registration the right to exclude other persons from the:
- making;
- importing;
- using;
- disposing (e.g. selling);
of any article included in the class in which the design is registered and embodying the registered design or a design not substantially different from the registered design.
Practical considerations
Designs can be registered for a wide variety of articles including car wheels, containers (e.g. milk bottles), jewellery, furniture, a pattern printed on a fabric, tread pattern on a car tyre, design of a cell phone, etc.
In addition to this, designs can also be registered for graphical user interfaces or layouts of websites, for example. Furthermore, the Act explicitly provides protection for integrated circuit topographies and mask works’ as functional designs.
The ambit of protection is determined by the novelty of the design. If there exists a large difference between the new design and the prior art, then the scope of protection of the new design will be broad. If there is a small difference between the new design and the prior art, the scope of protection of the new design will be narrow.
Copyright in South Africa is governed by the Copyright Act 98 of 1978 (“the Act”)
Copyright protects original works, and allows the owner of copyright to prohibit others from making unauthorized copies, reproductions or adaptations of the work, and/or offering these infringing copies for sale.
Copyright is conferred automatically in terms of the Act when certain basic requirements are met, and no registration is therefore necessary. In fact, registration is not possible in South Africa (and most countries), except in the case of cinematograph films, which can, but do not have to be, registered.
Although not a requirement, a warning to third parties of the protected nature of the work, such as “© 2013 Stellenbosch University All Rights Reserved”, is recommended.
Ownership
As a general rule, the author or creator of a work is also the first owner of copyright. The major exceptions to the rule are where the work was made in the course of employment (the employer is the automatic owner), or where certain types of work are commissioned.
Where paintings, photographs, portraits, films, or sound recordings are commissioned, the commissioning party is automatically the owner. For all other commissioned works (e.g. computer programmes, logos, website copy), the parties should govern ownership by agreement, failing which, the first owner is still the author/creator, even though the work has been commissioned.
Requirements for Copyright
- the author must be resident in South Africa or a member state of the Berne Convention (the vast majority of countries);
- the work must be reduced to a tangible form – copyright does not protect the idea, but rather its physical embodiment;
- the work must have been published (i.e. made available in sufficient quantities to the target market);
- the work must be original; and
- the work should not be immoral or against public policy.
The major point for debate in most cases will be the originality of the work. South African case law sets a fairly low threshold for what “original” means, with our courts saying original does not have to mean “good” or meritorious”. Relevant considerations include the level and type of effort applied, as well as the extent to which existing material was used in creating the work.
Types of Works
The major works protected by the Act include:
- Literary Works e.g. novels and poetic works;
- Musical Works;
- Artistic Works e.g. paintings, photographs, architectural works;
- Cinematograph films;
- Sound Recordings; and
- Computer Programs;
Duration
The rules differ slightly from work to work, but the general rule for duration is the life of the author plus 50 years.
Copyright Infringement and defenses
Infringement arises where a party copies, adapts or reproduces an original work. There are a number of exceptions to this basic rule, and use of a work for research, criticism, review or journalistic purposes does not amount to infringement.
Importing of grey goods, i.e. importing of genuine goods but without licence to do so from the copyright owner or licensee in South Africa, is prohibited under the Act.
Claims for damages arise from the date a copying party is made aware of the copyright owner’s claim and the copying party’s alleged infringement of copyright.
Organisations
There are a number of industry bodies that concern themselves with the enforcement of royalty payments for the use of works of copyright. These include:
DALRO (Dramatic, Artistic and Literary Works Organization)
SAMRO (South African Music Rights Organization)
SAPA (South African Publishers’ Association)
MUSA (Musicians’ Union of SA)
There is also a Copyright bill that has caused quite some concern and which has been returned to Parliament by the President of South Africa. You can view the bill and commentary.
Registered Trade Marks are governed by the South African Trade Marks Act 194 of 1993 (“the Act”). Unregistered Trade Marks are protected by the common law, but these rights are harder to prove and do not provide the same degree of protection as a registered Trade Mark.
By definition, a Trade Mark must be capable of distinguishing the goods or services of one person from the goods or services of another person. This “distinguishing function” is a key element of Trade Mark law.
A mark can be a combination of letters, numbers and images. So-called non-traditional marks may also be registrable on condition that they are capable of distinguishing and that their appearance does not serve a functional purpose (in which case a design or patent may be the more appropriate form of protection). Many non-traditional marks are unable to meet these criteria. Examples of non-traditional marks include sounds, containers for goods, colours, shapes and patterns.
Registration
In order to obtain registered Trade Mark rights, the mark needs to be both inherently registrable and relatively registrable.
Inherent registrability considers the descriptiveness of the mark. Invented words are strong Trade Mark, whereas words that describe the goods or services that a Trade Mark is used in relation to are weak and may not be registrable if considered wholly descriptive.
Relative registrability considers pre-existing marks on the Trade Marks register. If a mark that is confusingly similar to your mark exists on the register, the pre-existing mark may prevent your mark from being registered.
In order to register a Trade Mark, an application for registration must be made to the Companies and Intellectual Property Commission (“CIPC”) together with the prescribed application fees. The application is examined as to inherent and relative registrability, after which the mark may be accepted. The mark is then advertised and open to opposition by third parties for three months. Once this period expires, the registration certificates are issued.
In a straightforward application, the whole procedure will take approximately 18-24 months. If the registration is successful, Trade Mark rights will be granted retrospectively from the date that the application was received by CIPC.
Term and Effect of a Trade Mark
Unlike other forms of intellectual property, a Trade Mark can last in perpetuity. However, the following factors need to be considered:
- A Trade Mark needs to be renewed every ten years (calculated from the filing date);
- If a Trade Mark is not used for a long period of time, it is vulnerable to being removed from the register;
- If Trade Mark rights are not enforced, there is a risk that the mark will become generic (the words Escalator and Wind Surfer were once registered Trade Marks, but have now lost their distinctive character).
The effect of a registered Trade Mark is that other people may not use a confusingly similar mark in relation to goods or services identical or similar to those for which the Trade Mark is registered.
Assessments of confusion under the Act compare the two Trade Marks only, and not the broader get-ups of the competing goods or services.
Certain Trade Marks that are known to a substantial number of people in an industry may acquire the status of a well-known mark. In certain situations, the proprietor of a registered well-known mark may be able to prevent others from using the well-known mark in relation to unrelated goods or services where there is no prospect of confusion.
A registered Trade Mark is considered to be an asset, as a result it can be:
- Hypothecated (for security);
- Licenced; and
- Attached (in court proceedings).
Certification and Collective Marks
A certification mark can be filed by any person who does not conduct business in the industry that the certification mark is used in relation to. Certification marks are usually used to certify that particular goods or services have particular characteristics, e.g. the halal mark or genuine leather mark.
A collective mark can be filed by an association whose members form part of a particular industry. Collective marks are often used to show that particular goods are from a particular region.
As with ordinary marks, the marks need to be capable of distinguishing, but in these cases, the distinction is from offerings not certified or part of the particular collective.
Common Law Rights
A mark can receive common law protection if it has acquired a reputation in South Africa. The action for enforcement will usually lie in the common law remedy of passing-off.
Passing-off occurs when there is a misrepresentation (even an inadvertent one) by one trader that its goods or services are that of another trader, or somehow associated with or endorsed by that other trader, causing loss to the other trader.
When assessing whether passing off has taken place, the whole get-ups of the goods or services are considered.
Click here for the trademark portfolio
Click here for the Policy in Respect of the Use and Licensing of SU Trademarks
Plant breeders’ rights in South Africa are governed by the Plant Breeders’ Rights Act 15 of 1976 as amended (“the Act”).
In terms of the Act, protection may be obtained in respect of a new, distinct, uniform and stable variety of any prescribed kind of plant. Plant breeders’ rights prevent third parties from propagating certain new varieties of plants developed by a plant breeder.
The Act defines “variety” as any plant grouping within a single botanical taxon of the lowest known classification which can be:
- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes;
- distinguished from any other plant grouping by the expression of at least one of the said characteristics; and
- considered as a unit with regard to its suitability for being propagated unchanged.
Registration
In order for a variety to qualify for plant breeders’ rights it must be new, distinct, uniform and stable as defined in the Act and briefly discussed below.
In essence, a variety will be considered to be “new” if propagating or harvested material from it has not been sold or otherwise disposed of by the breeder:
- in South Africa for more than one year;
- and in a country signatory to the Berne Convention for more than six years in respect of vines and trees, and four years in respect of all other varieties.
A variety will be deemed to be distinct if it is clearly distinguishable from any other variety of the same kind of plant of which the existence on the date is a matter of common knowledge.
A variety will be deemed to be uniform if it is sufficiently uniform with regard to the characteristics of the variety in question, subject to the variation that may be expected from the particular features of the propagation thereof.
A variety will be deemed to be stable if the characteristics thereof remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of such cycle.
Only a breeder may apply for a plant breeders’ right. A “breeder” is:
- the person who bred or discovered and developed the variety;
- the employer of an employee who bred, or discovered and developed, the variety, if the employee did so in the scope of his/her employment; and
- the successor in title of parties identified in (a) and (b).
In order to register plant breeders’ rights an application for registration must be made to the Department of Agriculture, Forestry and Fisheries (“DAFF”) together with the prescribed application fees and documents. The application is examined by the authorities and samples of the plant will generally be required for testing.
The examination process normally takes between three and five years. A variety may not be sold or commercially exploited in South Africa during the examination period and until registration thereof, unless permission is obtained from the authorities.
It is possible to apply for provisional protection during the examination period. The holder of a protective direction is entitled to sell or offer for sale reproductive material of the variety in question, but only for the purposes of multiplication or testing. Provisional protection effectively allows the applicant the same protection as if a plant breeders’ right has been registered.
Term and Effect of Plant Breeders’ Rights
The term of a plant breeders’ right is:
- 25 years, in the case of vines and trees; and
- 20 years, in all other cases.
The term is calculated from the date on which a certificate of registration is issued and an annual renewal fee is payable on or before 1 January of each year during the currency of the plant breeders’ right.
The effect of the grant of a plant breeders’ right is that a third party wanting to undertake the
- production or reproduction;
- conditioning for the purpose of propagation;
- sale or any other form of marketing;
- exporting;
- importing; or
- stocking for any of the purposes mentioned in (a) to (e)
of
- propagating material of the relevant variety; or
- harvested material, including plants, which was obtained through the unauthorised use of propagating material of the relevant variety
during the currency of the plant breeders’ right, is only entitled to do so if authority is obtained by way of a license from the plant breeder.
These rights also apply to varieties which are derived from the registered variety and which are not distinguishable from the protected variety and the production of which requires the repeated use of the protected variety.
Practical considerations
After registration of a plant breeders’ right, propagating material of the relevant variety sold for the purposes of propagation must clearly and legibly indicate the denomination of the variety on a label which is attached thereto. If it is packed in a container, the denomination of the variety must be indicated on the container.
Before propagating material of certain kinds of plants can be sold in South Africa, the relevant variety must be placed on the Variety List which is compiled in terms of the Plant Improvement Act (2) and maintained by DAFF. The variety list includes the most economically important agricultural, vegetable and fruit crops. In order to do this, an application must be made to the Registrar for Plant Improvement.
The GMO Act (1) was enacted to provide for the promotion of responsible development, production, use and application of genetically modified organisms act 1997 (act no. 15 of 1997) “Act“. All activities such as importation, production, release and distribution are regulated to limit possible harmful consequences to the environment.
The Act also lays down the requirements and criteria for risk assessments and provides appropriate procedures for the notification of specific activities involving the use of genetically modified organisms.
Although Stellenbosch University (SU) does not have a GMO policy, it is expected from all SU departments that perform research in the field of GMO to practice under the GMO Act.
GMOs can be legally protected under the existing Intellectual Property Policy of SU, found on this website.
Regulations
The Minister of Agriculture, acting under section 20 of the GMO Act, makes the regulations as set out hereto (/assets/files/Downloads/act_gmo1997.pdf).
Applicants may apply for permits to perform activities relating to GMOs in terms of these regulations. A permit is not required for organisms used under conditions of contained use in academic and research facilities.
It will be necessary for applicants to assess risks, register facilities and main records pertaining to risk assessments.
It will also be necessary to notify the public of any proposed release of GMOs and inform the registrar in the event of an accident involving GMOs.
The regulations also set out the requirements for effective management of waste so that it does not have a negative impact on the environment and human health.
Practical considerations
The GMO is implemented by the Directorate Biosafety of the Department of Agriculture, Forestry and Fisheries. Two regulatory bodies, namely the Executive Council and the Advisory Committee, composed of independent scientists with various scientific backgrounds, decide on applications.
Any person who fails to comply with the requirements shall be guilty of an offence and liable to penalties as set out in the Act.