CIP – The Anton Mostert Chair of Intellectual Property

The practice of granting a monopoly over the production and distribution of an invention, or its fundamental idea, is the exclusive field of the law of patents. It was conceived specifically to protect the intellectual activity and aims to stimulate revolutionary technology. Across the scope of intellectual property law, patent protection is the only form that approaches the protection of pure ideas or concepts while other forms of IP law protect the expression of ideas in various forms.

The Law of Patents

The law of patents is based on the maxim prior tempore, potior iure (first in time, first in law). It is therefore simply a question of first registration – the party who achieves a registered patent over his invention will have the strongest (or in most cases exclusive) title to that idea.

Definition

The Patents Act 57 of 1978 defines a patent as “any new invention which involves an inventive step and which is capable of being used in trade, industry or agriculture” and grants the holder the exclusive rights to “exclude other persons from making, using, exercising, disposing of or […] importing the invention”.

As such, patents protect the commercial value of ideas and are therefore often of exceedingly great financial value. The most common patentable inventions are derived from:

• Biotechnology and life sciences
• Chemistry and chemical engineering
• Mining, mechanical and civil engineering
• Electrical and electronic engineering
• Software engineering/programming
• Nanotechnology

Requirements for patent protection

To qualify for protection, the patent must relate to a product, a process or both. Any product (such as a machine, a genetic formulation or scientific compound, a microchip or electronic circuit or any apparatus) or process (any series of steps regardless of its result) is patentable.

To receive registration as a patent, an invention must meet the following requirements:

• The invention must have a technical character – the creation should be of an industrial or mechanical nature or have practical application in the arts or sciences,
• The invention must be complete – the cause and effect (relation between the steps taken by the inventor and the patented result) should thus be feasible (theoretically) and repeatable,
• The invention must be beyond the state of the art – a novelty in the process or result of the invention is required compared to all previously known technology in the field and should not be obvious or lacking inventiveness to a knowledgeable person,
• The invention must be capable of use in trade, industry or agriculture – it is not required that the invention be intended for actual use, financially or practically feasible but at least possible of finding application if all else is equal.

However, certain inventions are not patentable and excluded by the Act because it does not qualify as an invention or does not meet one or more of the requirements for registration:

• Discoveries (any product or process happened upon and not the result of human activity)
• Scientific theory
• Mathematical methods
• Literary, dramatic, musical or artistic work or any other aesthetic creation
• Schemes, rules or methods for performing mental acts, playing games or doing business
• Computer programs as such
• Presentations of information
• Any variety of non-GM (genetically modified) animal or plant or any essentially biological 
process for the production of animals or plants (except a micro-biological process or the product of such a process)
• Any method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body.

Registration & Maintenance

The Patent Office, under control of the registrar, receives and administers all patent applications. The application may be for a provisional patent or a final application, and must be accompanied by a patent specification. In the case of a final application the patent specification usually contain a description of the invention, its manner of performance or results achieved and a set of illustrations, drawings, diagrams or schematics to describe and delineate the invention.

A registered patent will endure for a period of 20 years from the date the first application was filed. However, unless the annual renewal fee is paid to the Patent Office, the patent will lapse at the end of the last year for which the renewal fee was paid.

To enable the protection of a patent registered in the Republic, it is necessary to receive registration of the same patent in every foreign jurisdiction or registration for a regional or international patent according to the Patent Cooperation Treaty.

The Law of Registered Designs

While patents protect the underlying ideas, the law of registered designs enable the protection of the outwardly visible, aesthetic (or otherwise) appearance of the physical embodiment of any concept.

It is possible to register a design that was intentionally created (often referred to as ornamentation) or merely the result of a manufacturing or other process. In addition, in the Republic it is possible to register a functional design in terms of the Designs Act 195 of 1993, and is a novel approach to the protection of designs in foreign and international law. However, functional designs are also considered according to its visual appearance and, therefore, do not provide protection for the function/utility of the design.

As a result, a dual register of designs is maintained, divided into (1) aesthetic designs and (2) functional designs.

To qualify for registration (in either category) a design need not display an aesthetic quality or any minimum level of visual appeal. However, the design must be applied to a surface (of any article) and be discernable by the human eye alone, although it need not be immediate apparent.

In addition, the design must be novel (compared to all other known designs) and original (in the case of aesthetic designs) or non-commonplace (in the case of functional designs). Finally, the design should be intended for reproduction by an industrial process.

Certain designs are, however, excluded from registration:

• Incidental designs – a design (feature) that is solely necessitated by the function that the article is intended to perform,
• Construction designs – a design method or principle itself is not capable of registration, although the design produced on an article as a result of that process may be protected,
• Spare-parts designs – no design, feature or pattern, shape or configuration of the spare parts of a machine, vehicle or equipment in the case of a functional design.

An application for registration, along with one or more representations of the design and a definitive statement, is deposited with the registrar of the Designs Office. A registered design will endure for 15 years (aesthetic designs) or 10 years (functional designs) from the date of application. Registration must be renewed annually (at a fee), starting from the third year after the registration is granted.

Originally drafted to allow the English Crown to profit from the reproduction of books, modern copyright law has become a complex, dynamic, liberal and indispensible mechanism for the protection and commercial exploitation of all types of personal expression.

Despite the name, copyright law is not limited to the right of copying work. It may be described as a bundle of rights that (1) define the author’s monopoly over work that embody his intellectual efforts and (2) determine the manner in which such a work may be used by the author or others.

Therefore, the author’s right to control the work for a limited period is an essential concept in copyright law. The bundle of rights conferred by copyright law, depending on the type of work, may extend to:

Reproducing the work (such as copying, remaking, quoting, digitising, printing, downloading),
• Adapting the work (such as translating, amending, extracting, paraphrasing),
• Publishing the work (if it was an unpublished before, including online publication),
• Performing the work or causing it to be seen or heard in public (even where the performance is to a limited number of invited guests)
• Letting or offering or exposing the work for hire
• Broadcasting or transmitting the work (or including it in a film or TV broadcast)
• Making a recording of the work
• Distributing the work

Any person who performs any of these acts in relation to a protected work during the 50-year term of copyright protection may be guilty of infringing the author’s rights and liable for such conduct.

South African copyright law recognises the widest range of copyrightable work to address as many forms of intellectual expression as possible. To vest copyright protection, the author’s ideas must be expressed in any one of the following forms:

• Literary work (The law does not require that the work have any literary merit. It is therefore possible to qualify for protection despite the complete absence of written quality or legibility. Any combination of letters of number will therefore qualify as a literary work. The Copyright Act further lists a series of examples such as a novel, story, poem, play, script, textbook, treaty, history, biography, essay, article, encyclopaedia, dictionary, letter, report, memorandum, lecture, speech, sermon, table or compilation of data),
• Musical work (Any work that consists of musical notation and instructions for its performance. Any words or movements intended to be sung, performed or spoken with the music is not protected as part of the musical work, but may resort under dramatic works as a type of literary work),
• Artistic work (Regardless of the artistic merit, appearance or quality of the work, copyright may vest in any painting, sculpture, drawing, engraving, photograph, work of architecture or work of craftsmanship),
• Cinematograph films
• Sound and TV broadcasts,
• Programme-carrying signals,
• Published editions (The first print of a specific arrangement of a literary or musical work),
• Computer programs (Including the source and object code).

It is of course also possible to create a work that combines several types of copyrightable work, in which case the separate identifiable work will each be protected as such or the complete work may be protected as a published edition, film, broadcast or signal.

In South Africa, copyright is formality free. Therefore, the author of a qualifying type of work will be vested with the exclusive rights to his/her work automatically once the requirements for copyright protection are met. For this reason, copyright is said to subsist in a work, and no registration of copyright is necessary (or indeed possible).

The requirements, or rather conditions, for subsistence of copyright are:

The work must be original. This does not mean that the work must be novel, innovative, unique or even entirely created by the author. The originality requirement merely refers to the fact that the work must evidently be the result of the author’s own efforts to give expression to an idea. The fact that the work consists, wholly or in part, of work drawn from somewhere else (that may already be protected by copyright) does not prevent the final product from passing the originality test. Therefore, the first requirement for subsistence refers to the original efforts that the author invested in the work, and not the original result of his efforts.

The work must be reduced to material form. It is impossible to vest copyright in any ideas or concepts. Therefore copyright is said to protect only the expression of ideas. Thus, the fixation requirement dictates that a work is only eligible for protection once the author has recorded it in some material form. Prior to this fixation, no copyrightable work exists. As a result of continued development in copyright law the fixation requirement is met once the work is embodied in any manner or form. It is therefore necessary to record the work in analogue form (paper, tape, canvas, film) or any digital format of whatever nature (ROM, HDD, CD, DVD or any online manifestation of storage).

The work was produced by a citizen, resident or person domiciled in the Republic, or a national of any other nation that is also a signatory to the Berne Convention. Alternatively, the work was produced by a juristic person incorporated in the Republic or selected other countries, or first published (or made) in the Republic.

Once these requirements are met, the work is protected from the moment it is created for a period of 50 years. During this time the author may permit anyone to perform any of the restricted acts (such as print a copy of the book or perform the musical work), assign any or all of these rights to another party of permanently transfer the rights (by contract or operation of law).

Further, the author or owner (or exclusive license holder) of copyright is vested with the capacity to legally defend his/her rights and claim any of the available remedies for infringement. Once copyright expires, the work resorts in the public domain and may be freely used, adapted or distributed subject to certain limitations (such as the duty to recognise the original author of the work).

Finally, copyright protection also prevents the unauthorised dealing with or profiteering from infringing copies of the work as well as the production of, or facilitating the production of, such infringing copies. In addition, the Copyright Act criminalises the trade in, distribution of or importation of infringing work if the person(s) accused bear knowledge of the fact that such works constitute infringing copies.

However, as the creator of the public domain, copyright law allows the individual the right to draw from, build on, make copies of or use protected work (during the term of protection) for certain purposes. By allowing the use of protected work for personal reasons, private study, teaching or illustration, demonstration, reconstruction, quotation or reverse engineering (among others) the law further stimulates the production of intellectual works without diminishing the author’s ability to enjoy the fruits of his/her labours.

A word, device, symbol or sign that is distinctive, descriptive and/or recognisable by the consumer as an indication of the product’s origin. For this reason Trademark Law is concerned with establishing the most fair, effective, transparent and obvious system for the marketing of goods or services when conducted with the aid of the manufacturer’s insignia (or other recognisable identifying element).

Although the producer, distributor or manufacturer often use its own trade name as an indication of origin, trademarks go beyond the limited scope of trade names to address the application of other words, names, numerals, patterns, images, colour schemes, logos, ornamentation or devices (such as a container or packaging material) or any combination thereof.

In addition to the rigorous protection offered by the Trade Marks Act 194 of 1993, the common law (specifically that of unlawful competition) may also be applied to the regulation of trademark use in addition to (or as an alternative for) statutory protection.

Originally restricted to proprietary marks (an indication of ownership) affixed to livestock or cargo, the modern practice, of identification symbols on commercial goods or services, serve a much wider purpose aimed at identifying goods in trade. For this reason the Law of Trademarks regulates the use of any mark for purposes of trade (and not as an indication of ownership).

Today, trademarks perform several functions;

• An indication of origin – to mark the source of the product
• An indication of distinctiveness – to mark the product as different from similar goods or services
• An indication of standard – to mark all products of the same proprietor as similar in quality of production/performance/status
• An indication of promotion – to advertise the product and enable the recognition of a proprietor’s products

To qualify for protection under the Act, a proprietor must apply (and receive) registration of his trademark. It is however not necessary that the proprietor has made prior use of that mark. The mark will be protected from the moment it is registered. In lieu of registration, a proprietor’s mark is only protected by the common law.

In South Africa, an application for the registration of a trademark is examined to determine if it complies with the requirements of the Act. The law further allows for a process of opposition to the registration of a mark by any member of the public.

The requirements for registration are:

• The mark must fall within the definition of a trademark.
• The mark must be capable of distinguishing the product in relation to which it is being registered.
• Registration of the mark is not prohibited by the Act.

Registration of a mark will be prohibited if (inter alia) it is not capable of graphic representation, it is deceptive, it is not distinctive, it is merely descriptive, it is a generic mark, it contains protected state or official insignia or the application for registration was brought in bad faith.

The registration of a trademark lapses after 10 years, but is renewable upon application to the registrar (at a renewal fee) periodically for additional 10-year periods. A trademark will therefore remain on the register indefinitely, provided that it is consistently renewed.

Primary Infringement

After registration, the proprietor is entitled to defend the exclusive use of his mark by obstructing (the current or future use in trade or registration of) any mark that is identical or similar to the registered mark and used (in trade) for a product in the same category. However, to succeed with this action for primary infringement the Act requires that use of the mark is likely to cause confusion (in the mind of the consumer) or deception about the origin of the product.

Further Infringement

A registered trademark will also be infringed by the unauthorised use (in the course of trade) of an identical or similar mark applied to a product that is not in the same category (as the product for which the mark was registered) but merely a similar product (goods or services). Again, the Act requires that a likelihood of confusion or deception exists in order to succeed with the action for infringement.

Dilution

The Act extends the protection of trademarks to proprietors with a reputation in South Africa despite the fact that their trademark is not registered locally (provided that it is registered in another country). In such cases, use of the same or similar mark (to the reputed mark) in South Africa will be prohibited if the infringing mark is:

• Likely to take unfair advantage of the distinctive character or reputation of the registered mark, or
• Likely to be detrimental to the distinctive character or reputation of the registered mark.

In the case of infringement by dilution, it is not necessary to show that the infringing mark is used in relation to goods or services for which the original mark is registered. It is further not necessary to show that there is any likelihood of confusion or deception, or that the infringing mark is used on similar goods.

Remedies

A successful action for trademark infringement entitles the proprietor to:

• An interdict to stop the use of the infringing mark and prevent future use,
• A removal order to strip the infringing trademark from all products that display the mark,
• Delivery (to the proprietor) of all products to which the infringing mark is permanently attached,
• An amount of damages payable to the proprietor or
• An amount equal to reasonably royalties that would (hypothetically) have been payable to the proprietor for the use of the mark.