Picture: THINKSTOCK
Picture: THINKSTOCK

GOVERNMENT policy on a number of intellectual property-related issues is being updated and streamlined as part of a review and amendment process in the area of IP being undertaken by the Department of Trade and Industry.

Gerard du Plessis, chairman of law firm Adams & Adams, says this process involves all IP-related legislation, covering trademarks, patents and copyright issues, among others.

The proposed amendments will be in line with the overarching IP policy instrument that has been drafted and is in the process of being finalised, but is not in the public domain at this stage, says Mr du Plessis.

However, the Department of Trade and Industry has been in preliminary consultation with selected stakeholders, on a confidential basis, on the review of its IP policy.

He says the firm expects the revised policy to be published for public comment soon. The policy review is expected to focus on a number of issues. With regard to trademarks, South Africa is set to become part of the international filing system in terms of the Madrid Protocol and there is also likely to be a focus on the protection of "geographical indications" — legal protection relating to the trademark rights of traditional country-owned brands such as rooibos tea, wines and other products, such as Karoo lamb.

"On the patent side we expect there to be a focus on issues of healthcare and access to medicines, given the global debate on the issue of whether patents form an obstacle to affordable medicines," says Mr du Plessis. "We also expect the policy to deal with the question of examination of patents. In South Africa, patent applications are not examined as to substance when they are filed and registered, but there is a suggestion that, as in other countries, we should start examining patents for validity and to determine whether they are for novel and non-obvious inventions or not."

Mr du Plessis notes that over the past year, there has also been a focus on IP matters in the Supreme Court of Appeal, including a current matter relating to design protection in terms of the Designs Act, for the aesthetic features of external car parts such as bumpers, fenders and lights on motor vehicles.

Says Mr du Plessis: "Last year we had a record number of trademark filings in South Africa, and we expect 2013 to be a record year as well."

He says one of the current trends in IP within the legal profession is an increasing focus of clients in the rest of Africa, both in the filing of trademarks and patents, as well as on litigation issues.

"Our volumes of work in the prosecution of trademark applications, as well as litigation matters, are on the increase throughout Africa and have been for some time," he says.

Dina Biagio, partner and patent attorney with legal firm Spoor & Fisher, says opinion in South Africa is sometimes divided as to the cost-effectiveness of patents and the business benefits and protection that can be gained from them.

Among the misconceptions among smaller businesses, for example, is that patents are unduly expensive. However, she says the fact that South Africa does not have an examination system for patents in place means that obtaining a patent in South Africa is considerably less expensive compared with other examining countries in particular. Nevertheless, valid patents — although cheaper to obtain than in some other countries — are fully enforceable through the South African courts, she insists.

Another misconception is that the protection obtained by an inventor by taking out a patent can be offset by competitors or imitators changing one of the specifications of the original invention and then producing their own variant of it. But revolutionary or highly original inventions are more likely to obtain a broad scope of protection through means of a patent than those that have no patent protection at all.

In the more sophisticated corporate market, Ms Biagio adds, lack of IT management is a prevalent issue and patents and designs are often used as a form of insurance. At the initial stage, she says, many applicants do not give sufficient thought to how they intend commercialising the invention — and in which countries they should market it.

Typically, they apply for patents across a broad spectrum of jurisdictions as a form of insurance protection, but then fail to manage the patent portfolio effectively, "with the result that they end up with huge patent portfolios from which they are not deriving the benefit and which cost money".

In aligning their patent and business strategies, companies sometimes fail to consider patents in a commercial context — such as whether a patent would be a useful tool for a business in increasing its revenue stream, or whether the money might be better spent on marketing, new IT equipment or research and development.

"Patents are a commercial tool that could be used in a variety of ways, not only to sue somebody for infringement, or to limit competition, but to increase the marketability of their products," Ms Biagio says.

"If companies are looking for a licencing model to commercialise an invention, they don’t want to be licencing know-how or confidential information and risk the possibility of information leaks."

In such instances, she says, it would be better for companies to lodge a registered right by way of a patent and undertake a full know-how transfer, so minimising the risk of sensitive information being leaked.

"However, a patent may not always be the best method of protection. For instance, process patents, unlike product patents, are difficult to police and companies need to consider what is best appropriate for the circumstances in each case. "

The range and volume of patents has increased markedly, Ms Biagio says. Some 30 years ago, the biggest sector was chemicals, but today the electronics sector is coming into its own with regard to the number of patents being sought.