The Intellectual Property (IP) community of South Africa has raised concerns over the IP Law Amendment Act (IPLAA), which was signed into law by President Jacob Zuma in December.
Patent law firm Spoor & Fisher patent attorney and partner Lodewyk Cilliers says the amendment introduces traditional, or indigenous, designs, trademarks and copy- rights into South African law.
He mentions that it is important to note that the firm’s view does not imply resistance to the protection of indigenous knowledge. Most of the criticisms are that the protection of traditional designs should have been passed through sui generis legislation instead of being incorporated into existing statutes.
“It is a significant development in our IP law. Everyone supports the notion of protecting indigenous knowledge; however, there is con- cern that the existing trademarks, designs and copyrights Acts are not ideally suited to this and that the new amendment should have been a separate piece of legislation,” he notes.
Cilliers explains that one of the central tenets of design law is that a design must be new in order for it to be registered. However, by definition, a traditional, or indigenous, design cannot be new and is, therefore, incompatible with established principles of conventional design law locally and internationally.
“IP is a field of law that has a large degree of consistence globally, which renders the deviation from established norms even more noticeable.
“There are also issues that will make it very difficult to give effect to some of the aspects, such as identifying the indigenous community that will benefit from the patent. For example, if a design was developed 150 years ago, it will be difficult to determine with certainty the community who developed the design and who should accordingly benefit from the design,” he explains.
Meanwhile, another important development in South African IP law is the draft national IP policy, which was published in the Government Gazette of September 2013. The policy has caused some tension in the pharmaceuticals industry.
Cilliers notes that the pharmaceuticals industry is in some corners perceived as abusing the patent system, owing to South Africa being one of the few countries that does not have an examining patent office.
“An invention has to be new and inventive in order to be patentable, but these requirements are not tested by the patent office before a patent is granted. A third party can furthermore only challenge the validity of a patent once the patent has been granted.
“The fear is that companies will, especially when their main patent reaches its end, make small improvements and file a new patent application, which is sometimes referred to as ‘evergreening’ and, in some circles, seen as an unjustifiable extension of the life of the patent.”
Cilliers adds that, for example, a pharmaceuticals company may file a patent for the active ingredient of a medicine and, shortly before it expires, file a patent for a delivery system used with the active ingredient.
“The argument is that those changes are not necessarily inventive anymore and should not be patented, and that the medication should be made available to the public without further encumbrance. The feeling is that if patents were examined locally, it would prevent evergreening, because an examining patent office will prevent new patents for noninventive improvements from being granted.”
He adds, however, that most patents filed in South Africa by pharmaceuticals companies are done through the international patent cooperation treaty (PCT) process. Most of the patents filed by pharmaceuticals companies are, therefore, at least examined during the examination phase of the PCT process. In addition, the evergreening patent will only protect the improvement and the original invention will be available for use.
Cilliers notes that an examining patent office would help improve the integrity of the patents on South Africa’s register. However, there is also a concern that a poor-performing examining office could present its own problems, as a patent might be poorly examined, with the subsequent granted patent creating a false sense of security. “At present, you at least know you have to take a patent at face value,” he concludes.