Part I
Introduction
Intellectual Property (“IP”) has been defined as the “creations of the mind: inventions; literary and artistic works; and symbols, names, and images used in commerce” by the World Intellectual Property Organization (“WIPO”). WIPO has categorized intellectual property into two categories: Industrial rights which include patents and trademarks; and Copyright which include literary and artistic works.[1]
Patents, copyright, registered designs and trademarks are recognized categories of intellectual property rights in South Africa. IP rights can either be registered or unregistered (this mainly refers to copyright). Unregistered rights automatically exist upon their creation like novels or music, whereas registered rights e.g. logos, inventions etc. must be applied for, with the relevant authority.
South Africa is a signatory to the major international agreements concerning IP namely: Trade-Related Aspects of Intellectual Property Rights (TRIPS)[2], The Berne Convention[3], Paris Convention[4], the International Convention for the Protection of New Varieties of Plants (UPOV Convention)[5] and Patent Cooperation Treaty (PCT)[6]
In this piece I will be looking into whether the current Patent Act suffices to incentivize technological growth in South Africa and whether the Patents Act meets South Africa’s international obligation or standards furthermore I will look into whether the proposed changes made by the South African government remedy any shortfalls that are present in the Patents Act. This will be handled in a four-part series.
In Part I of this series I will be focusing on South Africa’s current patent regulations. Part II I will be looking into evergreening and the non-examination of patents. Part III will focus on patent oppositions and compulsory licensing and lastly part IV will look into some of the proposed changes of the IP policy.
1. South Africa’s current patent regulation
Patent rights are regulated by the Patents Act and the Companies and Intellectual Property Commission (CIPC) plays the role of a custodian of all patent applications that are filed within the Republic. For an inventor to successfully patent their invention, their invention would need to satisfy the requirements found in section 25 of the Patents Act.
Section 25 (1) of the Patents Act states that:
“A patent may, subject to the provisions of this section, be granted for any new invention which involves an inventive step and which is capable of being used or applied in trade or industry or agriculture.”[7]
Thus, for an invention to be patentable it needs to meet the following requirements:
1. Must be an invention by definition;
2. Be new or novel
3. The invention must involve an inventive step
4. The invention must have utility
5. The invention must be capable of being used in industry and agriculture.
Section 25 (2) of the Patents Act lists objects/articles that are excluded from being classified as inventions:
“Anything which consists of —
(a) a discovery;
(b) a scientific theory;
(c ) a mathematical method;
(d) a literary, dramatic, musical or artistic work or any other aesthetic creation;
(e) a scheme, rule or method for performing a mental act, playing a game or doing business;
(f ) a program for a computer; or
(g) the presentation of information, shall not be an invention for the purposes of this Act.”[8]
South African patent laws advocate for an unqualified novelty requirement. An invention is new if it does not form part of the state of the art immediately before the priority date of the invention, and the state of the art includes all subject matter that has been made available to the public in South Africa or abroad by written or oral description or use in any way.[9]
The TRIPS agreement expects its members with a development status to provide 20 years for patent protection “on products and processes that are new, innovative and capable of industrial application, including new chemical entities used to make medicines.”[10] However, while the TRIPS agreement requires 20 years of patent protection, it includes important safeguards that countries can adopt into their national laws to ensure that patents do not block medicine access.[11] While South Africa’s laws provide for 20-year patents as required by the TRIPS agreement, it does not include many of the safeguards and flexibilities such as compulsory licensing,[12] into national law to protect health and in particular, to help pharmaceutical companies that produce generic medications to address unaffordable medicine prices.
Intellectual Property legislations have a difficult balance to maintain in that the laws need to encourage innovation and protect the interest of the inventor whilst on the other hand balance the social benefits that arise from the disclosure of the knowledge once it becomes public knowledge e.g. balancing the interests of pharmaceutical companies and the access to vital medication to the public. I am of the view that the current patent system unintentionally so, leans more towards the interests of the pharmaceutical companies which in turn stifles innovation and limits access to medication that is needed by society. This is caused by many factors however I will only focus on the following factors:
I. South Africa non-examination practice;
II. The lack of an opposition system;
III. Evergreening; and
IV. The procedures for granting compulsory licensing.
[1] WIPO https://www.wipo.int/about-ip/en/ (04 May 2020).
[2] Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994; Established the minimum standards for the protection and enforcement of intellectual property rights for members of the World Trade Organization (WTO).
[3] Berne Convention for the Protection of Literary and Artistic Works (as amended on September 28, 1979); Is an international agreement that governs copyright law.
[4] Paris Convention for the Protection of Industrial Property (as amended on September 28, 1979); Is an international agreement that promotes the protection of industrial property i.e. trademarks, patents, designs etc.
[5] The International Convention for the Protection of New Varieties of Plants (as modified on March 19, 1991); The objective of the Convention is to promote the protection of new varieties of plants.
[6] Patent Cooperation Treaty (as modified on October 3, 2001); Is an international patent law treaty that provides a unified procedure for filing patent applications to protect inventions in each of its member states.
[7] Patent Act section 25 (1).
[8] Above section 25 (2).
[9] n 7 above “section 25 (5) An invention shall be deemed to be new if it does not form part of the state of the art immediately before the priority date of that invention.
(6) The state of the art shall comprise all matter (whether a product, a process, information about either, or anything else) which has been made available to the public (whether in the Republic or elsewhere) by written or oral description, by use or in any other way.
(7) The state of the art shall also comprise matter contained in an application, open to public inspection, for a patent, notwithstanding that that application was lodged at the patent office and became open to public inspection on or after the priority date of the relevant invention, if —
(a) that matter was contained in that application both as lodged and as open to public inspection; and
(b) the priority date of that matter is earlier than that of the invention.
(8) An invention used secretly and on a commercial scale within the Republic shall also be deemed to form part of the state of the art for the purposes of subsection (5).”
[10] https://msfaccess.org/sites/default/files/ACCES_report_FTPL_ENG_2016.pdf (06 May 2020).
[11] n 2 above.
[12] n 2 above Article 31.
