Intellectual Property Lawyer

We at Barnard Incorporated Attorneys, as a mainstream commercial law firm, have combined our institutional knowledge in corporate and commercial law with that of intellectual property. You can find our team of professional intellectual property lawyers in Pretoria.

Our qualified and experienced attorneys assist our clients to manage their intellectual property successfully with maximum efficiency to ensure that they extract the full potential of their intellectual property.

For all intellectual property lawyer enquiries, kindly contact Stefaans Gerber or Louw Du Toit at stefaans@barnardinc.co.za or louw@barnardinc.co.za or phone (+27) 861 088 088 and ask to be connected to one of our IP specialists.

WHAT IS INTELLECTUAL PROPERTY?WHAT IS THE DIFFERENCE BETWEEN AN INVENTION, DESIGN, PROCESS AND COMPOSITION?IP COMMERCIALISATIONPATENTSCOPYRIGHTTRADEMARK REGISTRATION: PROTECTING YOUR OWN

Intellectual property is a term that collectively refers to the intangible creations of the human intellect and consists mainly of patents, trademarks, designs and copyright. However, “know-how” and trade secrets also form part of intellectual property.

Some of these intellectual property rights (such as trademarks, patents and designs) are statutory rights granted in terms of legislation subsequent to an application to the applicable governing body which, if the application is successful, issues the proprietor with a certificate in confirmation of the right.

Other forms of intellectual property (such as copyright) automatically subsist in works if all the requirements in terms of legislation are met.

The purpose of intellectual property law is to encourage the development and progression of all forms of technology and artistry produced by the human race. In order to achieve this, the inventors and developers of the technology and artistry are awarded exclusive rights – normally for a fixed period of time – to enjoy and profit therefrom in exchange for their disclosure of the invention, design, process or composition.

Intellectual property encompasses a wide variety of ideas and products, which includes inventions, processes, methods, compounds, photographs, literature, music, plant varieties, software, designs etc. which can all be protected by intellectual property law.

Sufficient intellectual property commercialisation is imperative in order to enable a proprietor to exploit his or her intellectual property rights to its fullest potential.  Consequently, it is essential to manage these intellectual property rights correctly and efficiently from the start.

Our lawyers in Centurion are qualified and experienced professionals that are capable to efficiently assist all clients in the commercial management of their intellectual property.

An invention can entail a multitude of different inventions, i.e. mechanical or chemical, a process of producing a product or even a composition of matter. These inventions are capable of being patented.

A design can be registered for developed products which exhibit novel aesthetic or functional features, whilst the original product itself is not novel.

The intellectual property (IP) of a person or a company is, in most cases, the most valued asset of that person or company. So much so, that well-established IP rights can be provided as security to financial institutions to obtain loans or form part of negotiations in large corporate considerations.

Obtaining a patent for an invention; a trade mark for a brand name; a design right for a new design or even having copyright in works is merely the first step in protecting and enjoying your IP.

The next phase in the successful exploitation of your IP is the commercialisation thereof. There is a multitude of ways to commercialise your IP in order to produce maximum profit from it which includes:

  • IP LICENSING & FRANCHISING

One of the most powerful ways to maximise the efficiency of your IP is by licensing your IP rights to third parties.

All forms of IP (Patents, Designs, Trademarks, Copyright and Confidential Information) can be licensed to third parties in the form of a licensing or a franchising agreement.

In a licensing agreement, the owner of the right (the licensor) authorises a third party (the licensee) to utilise the rights in exchange for a fee or a royalty. The licensing of IP is the most common method of commercialisation.

Franchising agreements are specialised licensing agreements used to expand an existing brand or product and usually incorporates the use of Trademarks, Copyright and/or Know-how.

The terms of licensing agreements are open for negotiation between the parties.

  • DISTRIBUTION

Distribution agreements can be concluded with third parties in the event that one does not possess the necessary resources to distribute the product to a region where the demand is high.

  • CESSION & ASSIGNMENT

IP is an asset, and as such, rights in IP can be sold or ceded to third parties or even used as security in commercial agreements. A cession agreement as well as assigning the rights to third parties are both forms of commercialising IP.

  • MANUFACTURING

Depending on the resources available to an owner of the IP, there may exist a need to enter into an agreement with a factory or other large-scale manufacturer to reproduce the item or product in which the IP subsists.

  • PROFIT-SHARING

Where two respective owners of different IP wish to collaborate all their IP and produce a final product, the profits generated by the joined IP can be shared between such parties and can be manifested in a profit-sharing agreement.

For all intellectual property enquiries, kindly contact Stefaans Gerber or Louw Du Toit at stefaans@barnardinc.co.za or louw@barnardinc.co.za or phone (+27) 861 088 088 and ask to be connected to one of our IP specialists.

WHAT ARE THE BENEFITS OF COMMERCIALISING MY IP?

The purpose of the commercialisation of IP is to maximise profits and increase the efficiency of the business to its fullest potential. The commercialisation of IP will undoubtedly expand the business to the extent of your choosing.

A patent is a form of protection that provides a person or legal entity with the exclusive rights to manufacture, use, license or sell a concept or invention in the territory where the patent is granted.

For all intellectual property enquiries, kindly contact Stefaans Gerber or Louw Du Toit at stefaans@barnardinc.co.za or louw@barnardinc.co.za or phone (+27) 861 088 088 and ask to be connected to one of our IP specialists.

WHEN SHOULD I REGISTER A PATENT?

If you are the inventor of a new invention which can be used or applied in trade, industry on agriculture and you want to prevent other parties from manufacturing your invention, you can protect your invention by registering a patent.  To do so, however, your invention must fulfil the requirements of patentability.

HOW LONG IS A PATENT VALID FOR?

A granted patent is valid for 20 years. This entails that the owner of a patent is granted an exclusive legislative right to manufacture, exercise, dispose or offer to dispose of or implement the invention, in the region where the patent has been granted, so that he/she/it shall have and enjoy the whole profit and advantage accruing by reason of the invention.

After 20 years, all the information pertaining to the invention will fall in the public domain and other persons or entities may use this information to manufacture or sell generic replicates of such invention.

AGAINST WHOM IS A PATENT ENFORCEABLE?

It is important to take note that a patent is territorial in nature, which means that a patent is only enforceable in the country in which the application for a patent is granted. There are treaties and international systems in place to obtain patent protection in multiple countries, however, an inventor still needs to file in each individual country in which protection is needed.

A patent is enforceable against any third party, albeit a natural person or a legal entity.

WHAT ARE THE REQUIREMENTS FOR A PATENT TO BE REGISTERED?

The requirements for obtaining a patent for an invention are for the most part universal, in that most countries have the same uniform requirement for its patentable subject matter, which are:

  • Novelty;
  • Inventiveness; and
  • Capable of being used in industry.

NOVELTY

Patents, in most countries, have an absolute novelty requirement, which means that an invention is only patentable if it is new in the entire world. The Patents Act stipulates that an invention shall be deemed to be new if it does not form part of the state of the art immediately before the application date of the invention.

To elaborate, according to the Patents Act, the state of the art shall comprise all matter (whether a product, a process or information to either) which has been made available to the public by written or oral description, by use or in any other way.

The Patents Act, however, provides some exceptions to the rule.

INVENTIVENESS

There are different tests in different countries pertaining to the inventiveness of an invention to be patented. In South Africa, an invention shall be deemed to involve an inventive step if such step (which forms the basis of the invention) is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.

CAPABLE OF BEING USED IN INDUSTRY

This requirement entails that the invention must be able to be practically and physically applied in an industry. The invention must not merely be an idea.

WHICH PRODUCTS CAN BE PATENTED?

The South African Patents Act, stipulates which inventions are NOT patentable. Therefore, any invention that satisfies the requirements shall be patentable subject to the exclusions contained in the Patents Act.

The exclusions contained in Section 25 of the Patents Act, can be summarised as follows:

  • Discoveries;
  • Scientific theories;
  • Mathematical methods;
  • Literary, dramatic, musical or artistic works or any other aesthetic creations;
  • Schemes, rules or methods for performing mental acts, playing a game or doing business;
  • Computer programs; or
  • Presentation of information;
  • Plant or animal varieties;
  • Any essentially biological process for the production of animals or plants (not being a micro-biological process or the product of such a process;
  • Methods of treatment of the human or animal body;
  • Methods of diagnosis on the human or animal body;

This is not an exhaustive list but can be used as a guideline. Certain exceptions are applicable to some of the above items. One of which is that the new use of a known substance may be patentable in that the specific composition may not be new, but a new application thereof to deliver a new process or product may well be patentable.

An invention can, therefore, be anything from the mechanical machine or a composition of matter to a method, process or chemical compound.

HOW DO I REGISTER A PATENT?

In order to obtain patent rights in South Africa, an application for a patent must be filed at the patent office. A patent mainly consists of a patent specification, which is a document that describes the invention.

In South Africa, there are four forms of patent applications, namely:

  • A patent application accompanied by a provisional patent specification (Provisional Patent Application);
  • A patent application accompanied by a complete specification (Complete Patent Application);
  • A patent application filed in terms of the Patent Cooperation Treaty (PCT) (referred to as a PCT patent application); and
  • The subsequently filed national phase application in terms of the PCT.

PROVISIONAL PATENT APPLICATION

The main purpose of filing a provisional patent is to secure a priority date for the invention in order to limit other novelty-destroying matter or inventions that might have been created or patented. A patent’s novelty and inventiveness will be judged against the provisional filing date. Anything created before such priority date may be considered to the detriment of the invention’s ability to fulfil the formal requirements.

A provisional patent application is only effect of a period of 12 months and cannot mature into a granted patent without filing either a complete patent application or a PCT patent application.

Some amendments from the provisional application to the complete application are allowed, however, the provisional patent application should sufficiently describe the invention to the extent that it is clear from both applications that they pertain to the same invention.

In addition, in order to utilise a South African provisional patent application as a priority application in foreign countries (if the foreign countries are parties to the Paris Convention), the provisional patent application must meet the formal requirements of the foreign countries’ patent legislation, which normally stipulates that the provisional patent application must contain a comprehensive description of the invention.

PARIS CONVENTION

The Paris Convention applies to industrial property and includes patents, trademarks, industrial designs, utility models etc. and the repression of unfair competition.

The substantive provisions of the Convention fall into three main categories: national treatment, right of priority and common rules.

In the case of patents, the right of priority is provided. This right of priority means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (12 months), apply for protection in any of the other Contracting States.

These subsequent applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have a priority over applications filed by others during the said period of time for the same invention.

COMPLETE PATENT APPLICATION

A complete patent application is the final version of the invention and ultimately contains the full and final description of the invention for which a patent is granted.

It is not necessary to file a provisional patent application before a complete application is filed. A complete patent application can be filed as the first and final application in the event that all the research and development pertaining to the invention is complete or the invention is in its final form.

A complete patent application can also be filed and claim priority from an earlier South African provisional application – provided the complete application is based on the provisional application – or a complete application can be filed and claim priority from an earlier complete application which does not contain a claim to priority.

Alternatively, in cases pertaining to inventions in a foreign country, where that country is a party to the Paris Convention, the complete patent application may claim priority from an earlier patent application filed in that country.

A complete patent application claiming priority from an earlier application filed in a convention country is referred to as a convention application.

A complete patent application must sufficiently describe the invention as well as the manner in which it is to be performed in order to enable a person – skilled in the art of the invention –  to perform or reproduce the invention and must end with one or more claims defining the invention for which protection is sought.

In most cases, in which the validity of an invention is considered, the wording of the claims decides the outcome. Therefore, it is extremely important that the claims are drafted with care by qualified professionals.

The South African patent office is not an examining patent office as of yet and therefore no substantive examination will be executed on the merits of a patent application. A patent will be granted merely by satisfying the formal requirements (fees, prescribed forms, necessary documentation etc.)

The South African Patents Act provides that a complete patent application must be accepted by the patent office within 18 months from the date of application in South Africa. Furthermore, it provides that a national phase application must be accepted within 12 months from the date of application in South Africa unless an appeal has been lodged in respect of such application.

Once a patent has been accepted, notice of acceptance is given to the applicant by the Registrar. The applicant must then advertise the acceptance in the Patent Journal within three months of acceptance.

If no objection is made to the patent application, the patent will be granted by the Registrar by certificate.

PATENT COOPERATION TREATY PATENT APPLICATIONS (PCT PATENT APPLICATIONS )

This form of patent application is used to file an international patent application (PCT patent application) from countries which are parties to the Patent Cooperation Treaty. These PCT patent applications must be filed within 12 months of the filing of the initial provisional patent application.

The PCT is an international treaty between more than 140 Paris Convention countries. This patent application system makes it possible to obtain patent protection for an invention in multiple countries simultaneously, in a cost-effective manner.

The PCT patent application procedure can be summarised as follows:

An international patent application is filed which must comply with the PCT patent application formality requirements.

Thereafter, an International Search Authority (ISA) conducts a search to identify published documents, on a global scale, that may be relevant to the patentability of an invention claimed in the PCT patent application. The ISA will issue a search report, which will contain a list of the abovementioned documents. In consideration of the content and results contained in the search report, the ISA will provide a non-binding written opinion on the patentability of the invention claimed in such PCT patent application.

This written opinion provides applicants with the necessary information to make an informed decision regarding the probability of obtaining granted patents in any one of the PCT member countries.

After the expiration of 18 months after the first filing, the international application is published and therefore open for public inspection.

Thereafter, an international preliminary report on patentability (IPRP) is issued and communicated to the PCT member countries’ respective patent office which requests it.

After an IPRP is issued, the applicant will need to enter the national phase in the PCT member countries in which patent protection is desired.

NATIONAL PHASE APPLICATION SOUTH AFRICA

The entering of the national phase in PCT patent applications entails that individual national phase patent applications are filed at the patent offices of each country in which patent protection is sought.

After a PCT patent application is filed, which designates South Africa, and protection is required in South Africa, it will be necessary to enter the national phase in South Africa. To enter the national phase in South Africa, before the expiration of 31 months from the priority date of the PCT patent application, with a possible extension of a further 3 months to 34 months, certain formal requirements must be met as to fees and translation requirements.

Once this national phase patent application is filed, it will follow the same route as the complete patent application. If all the formalities in respect of the national phase application are met, a patent will be granted.

Intellectual property is a term used to describe the products of the human intellect and include designs, trademarks, patents and copyright. These products of the human intellect are protected by legislation which convers upon the creator of the product, for a limited period, exclusivity as to the exploitation thereof and in essence to capitalise financially from the product. Copyright is a subdivision of the bundle of Intellectual property rights which, under the South African Law is governed by the Copyright Act 98 of 1978.

MUST A COPYRIGHT BE REGISTERED?

A common misperception with regards to copyright is that it is a registerable right like patents, designs and trademarks. Copyright however, in terms of the Copyright Act, subsist automatically in specified categories of works which are outlined and defined by the Act. The Copyright Act does however set forth the requirements that have to be met in order for copyright to subsist in a work. Classes of Copyrighted works include, amongst others, Literary works, Musical works and Computer programs.

WHAT ARE THE REQUIREMENTS FOR COPYRIGHT?

ORIGINALITY OF WORKS

For copyright to subsist in a work, the work must be original. The Copyright Act does not provide a clear-cut definition of what constitutes an original work and one has to consider previous case law in the determination of whether a work is in fact original. In considering the courts view on what is deemed as an original work it is evident that the requirements for originality are not extensive. To determine whether a work is original, the courts rely on a factual enquiry.

This means that facts have to be presented to the court to subjectively make a decision whether a work is in fact original or not. The courts are of the view that for a work to be original it must not have been copied from a prior work of another person but rather have been made through the skill and effort of the author thereof, or as the courts put it, as a result of the “sweat of the brow” of the author.

MATERIAL FORM

The second requirement is that the work must be reduced to a material form. Copyright does not exist in thoughts, ideas or facts. Copyright protection will only be afforded to the physical or material manifestation or embodiment of elements of concepts once it is created and/or has come into being.

QUALIFIED PERSON

The third requirement is that the author must be a qualified person. This, in essence, means that the author must be a citizen of the Republic of South Africa or a person who is a resident or domiciled in the Republic. This definition was extended by regulation to include nationals, citizens and/or companies of Berne Convention countries, as the case may be.

WHAT IS THE DURATION OF COPYRIGHT?

Copyright duration is not indefinite and, in terms of the Copyright Act, the term of protection is determined with reference to the type of work at issue. For example. A literary, musical and artistic work is afforded copyright protection for the lifetime of the author and 50 years from the end of the year in which the author dies.

In the event that, prior to the death of the author, the work was never published, performed in public, offered for sale to the public or broadcasted the term of copyright continues to subsist for a period of 50 years from the end of the year in which the first of the aforementioned acts were done.

Upon expiration of the term of copyright the work falls within the public domain and may be used and/or performed without the authorisation or approval of the copyright owner. This does not mean that a person may copy and/or use the work and pass it off as their own creation. The author of the work must still be acknowledged as the author of such work.

OWNERSHIP OF COPYRIGHT

The Act provides that the owner of a copyrighted work will enjoy exclusive statutory rights, for a limited duration, to exploit the work commercially and/or in the rendering or performing certain dealings in relation to a specific work. It also grants the copyright owner the right to prevent others from performing those acts. It is therefore of utmost importance to ascertain who the owner of the copyright is.

As a rule, the author of the work is the first owner of any copyright in the work. There are however some exceptions to the rule which are detailed in Section 21 of the Act. Two of the most relevant exceptions prescribed in Section 21 are for works created for payment and works created in the course and scope of an employee’s employment with a company.

WORKS CREATED FOR PAYMENT

In terms of the Act, a person will be the owner of the copyright in a work if he/she commissioned one of the following acts to be done in the pursuance of commission:

  • the taking of a photograph;
  • the painting or drawing of a portrait;
  • the making of a gravure, cinematograph film or sound recording

The person commissioning the aforementioned works must pay or agree to pay for the commissioned work in money or money’s worth. The exception, however, only applies to the works specified above and is not a blanket exception covering all types of works.

This means that, when a person is paid to create a work not specified in this specific section, the author of the work remains the first copyright owner of the work. In order to obtain ownership in the work, the author has to assign the said work to the person paying for the particular work.

DOES MY EMPLOYER HAVE A COPYRIGHT OVER MY WORK?

In the event that a work is created by an employee in the course and scope of his or her employment, the owner of the copyright subsisting in the work will be the employer by virtue of sections 3 and 4 of the Copyright Act. These sections create a blanket exception and cover all work in which copyright may subsist in terms of the Copyright Act.

It is however a requisite that an employer/employee relationship exists in terms of the sections which will not apply if the author of the applicable work is an independent contractor. This also only covers work that was created in the course or scope of employment of the employee and anything created by the employee after hours which falls outside of this course and scope of his employment will not fall within this section. The employee will therefore be the owner of the copyright in such a work.

PROTECTION OFFERED BY THE COPYRIGHT ACT

Copyright confers a right upon the owner thereof to exclusively benefit from the right, financially and otherwise. The Copyright Act therefor prohibits certain actions in relation to the copyrighted work. Prohibited actions in relation to a work in which copyright subsist include, amongst others, the right to reproduce, publish, broadcast, or perform in public, as well as the making of an adaptation of the work.

WHAT CAN I DO IF SOMEONE INFRINGES ON MY COPYRIGHT?

The Copyright Act makes provision for remedies in the event of infringement which may include proceedings for damages, interdicting infringing conduct and the delivery-up of infringing copies of a work. The plaintiff in such infringement proceedings may also, as an alternative to a claim for damages, seek compensation in an amount calculated on the basis of a reasonable royalty which would have been payable by a licensee in respect of the work concerned.

For all intellectual property enquiries, kindly contact Stefaans Gerber or Louw Du Toit at stefaans@barnardinc.co.za or louw@barnardinc.co.za or phone (+27) 861 088 088 and ask to be connected to one of our IP specialists.

In the highly competitive market place, businesses are required to invest an essential amount of time and money in developing products and services that are new and innovative in order to compete with opposition businesses and to ensure their survival. This investment directly contributes to the building of a brand that in turn attracts goodwill in the market place.

Customers associate the quality of the products and services to a name and build trust and loyalty towards it. Consequent to this reputation and clientele which a business attracts through good service and products, often other businesses, unimpressively so, capitalize on that hard work by imitating that business or services and/or creating products that are very similar or the same as the original products – perhaps mostly unlawfully so.

Mostly, these products or services are not of the same quality as the original and this could lead to the proprietor business suffering damages and could lead to the dilution of the brand.

A trademark may be one of the greatest assets that a business can ever possess. A registered trademark is an asset which has value. It may be licensed, franchised, sold and even provided as security for a loan. For example, a brand like Apple constitutes a name on a product which is indicative of the quality that can be expected from the manufacturer and, in addition, determines the price that the owner may ask.

WHY REGISTER A TRADEMARK?
In registering a trademark a business is protecting the identity of its business. Under the Trademarks Act a business is afforded protection against others using the same or similar trademark to identify their business and or products. This means that should a business or individual institute action against an infringing party it need only prove that it is in possession of a lawful trademark registration.

The burden of proof then rests on the infringing party to prove that they are not acting unlawfully and infringing on the rights of the business owning such registration. The registration of a trademark offers the owner of the mark concrete proof of its legally protected rights and eliminates the need to rely on the common law.

COMMON LAW PROTECTION AGAINST INFRINGEMENT
In common law, a business or other proprietor is afforded protection against infringement through the law of unlawful competition and in particular under an action of passing-off. However, quite to the contrary with trademarks, in common law the burden of proof is on the owner of the business whose rights are being infringed upon to prove that another party is passing off another’s business as its own.

This means that the business’s rights being infringed upon has to comply with all the requirements for an action of passing-off which include, amongst others, that it has a reputation in the industry. This is often quite difficult and costly to prove especially when the business which rights are being infringed upon, is not well-known or does not possess the commercial footprint of its competitors. Proving a reputation in the market place may lead to costly market research and high legal bills.

DEFINITION OF A MARK
A trademark is defined as a mark used to distinguish the goods or services of one undertaking from those of other undertakings. This can be in the form of words, drawings, signs, symbols, colours or combinations thereof. A trademark can be a slogan, name, logo, a specific shape or a combination thereof. The following facts should be considered when registering a trademark:

  • It takes approximately 2 years to register a trademark;
  • In terms of Section 9 of the Trademarks Act a mark must be distinctive and be able to distinguish goods and services from the same kind of goods or services which are connected in the course of trade with another;
  • Section 10 of the Trademarks Act places prohibitions on the registration of marks and lists the negative attributes which trademarks may not possess;
  • A trade mark can therefore only be allowed to be registered and remain on the register if it is distinctive, as defined in section 9 and if it does not contravene any of the provisions of section 10;
  • Trademarks are territorial and registration only grants rights in the country in which the trade mark is registered. If a trade mark owner wishes to use and protect his trade mark in more than one country, then he should apply for registration of his trade mark in each of those countries;
  • Trademarks registration is subject to classification in one of 45 different classes. The first 34 classes relate to goods and the remaining 11 classes relate to services (e.g. banking services, construction, transport and education);
  • It is possible for a product or service to be registered in more than one class; and
  • Businesses have to renew their trademarks every 10 years.

Considerations when registering a trademark:

  • Be creative in choosing a trademark – this will ensure that a mark distinguishes the business’s products from that of others in the market place, which in turn mitigate the chances of a mark infringing on a mark already on the register;
  • Be pro-active and protect marks from inception – this may prevent an unnecessary time and resources spent in protecting unregistered marks by way of passing off; and
  • Businesses should seek the advice of a professional in ascertaining in what class to register your mark – the registration in the wrong class may render inefficient protection.

Louw du Toit – Barnard Incorporated Attorneys, Centurion
Barnard Inc is an attorneys firm in Centurion, Pretoria.

ATTORNEYS

DOUW BREED

MANAGING DIRECTOR


STEFAANS GERBER

JUNIOR ASSOCIATE


LOUW DU TOIT

JUNIOR ASSOCIATE

 

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