Guide on Intellectual Property

Creating something from scratch is a big achievement. Some of the best products and services are things that people have created from an idea. These are usually things that did not exist before and have disrupted the market. When you create something, it becomes your intellectual property.

What is Intellectual Property?

Intellectual property describes a set of intangible assets that are owned by a company or individual. This includes things such as artwork, symbols, logos, brand names, and designs. These assets are protected and cannot be used by anyone without prior consent.

In South Africa, the Companies and Intellectual Property Commission (CIPC) deals with intellectual property rights. The GlobalIPco system helps with IP registration across Africa.

Intellectual property exists because there are certain products of human intellect that need to be protected like physical property (tangible assets). It is important that you protect your ideas and products.

In this guide, we will explore the concept of intellectual property and how to ensure yours is protected

There are many types of intangible assets that can be classified as intellectual property.

1. Patents

A patent is an exclusive right given to an invention. The invention must be a product or a process. The patent must also provide a new way of doing something or offer a technical solution to a problem.

By protecting your patent idea, you prevent others from being able to commercially make, use, distribute or sell your idea. In South Africa, patents are protected for a limited period of 20 years. Anyone who wants to use it needs to get permission from you.

Patents are common in technology and software companies. Patent registration can be done via GlobalIPco for $399.

2. Copyrights

Copyrights are provided to authors and creators of original material. The material is automatically secured when the content is created. According to the South African government, most works eligible for copyright protection do not require registration. The exception is made for cinematograph films.

You can create your own copyright by putting the words ‘copyright’ or ‘copyright reserved’. Follow this up by putting your name, the year the original work was created.

If you want to put a copyright on a film, DVD or video, you need to apply to the Registrar of Copyright.

3. Trademark

A trademark is a recognisable symbol, phrase, or mark that represents a product. The trademark legally separates the product from other products. The trademark is exclusive to a company. For example, the Nike Swoosh. Nike’s brand line ‘just do it’, is only protected by a trademark.

Once you trademark something, no one else can use it or copy it. The CIPC registers trademarks in South Africa. Applications can be lodged in 45 different classes. This depends on the goods/services that the trademark will be used for.

A registered trademark can be protected forever. You will have to renew the registration every ten years. You can file a trademark with GlobalIPco for $199.

4. Franchises

A franchise is the licence purchased by an individual, company, or a party. The purchaser is called the franchisee. A franchise allows you to use the franchisor’s name, trademark, knowledge, and processes.

Franchisees are usually small businesses or independent entrepreneurs. The licence allows the franchisee to see a product or service under the franchisor’s name. For example, when you buy a KFC franchise, you can sell the products and use the KFC name and logo.
When you purchase a franchise, you pay the licence owner a start-up fee and licence fees.

5. Trade Secrets

Trade secrets are a company’s processes or practices. This information is not available to the public. They provide the company with an economic benefit or advantage.

Because trade secrets are a result of a company’s research and development (R&D) efforts, they are actively protected by the company. Some companies will have employees sign non-disclosure agreements (NDAs) to protect trade secrets and prevent insider trading.

6. Designs

Although designs can fall under patents, there is an exception for them in South African intellectual property law. By registering your designs with the CIPC, you get exclusive rights to use them.

Registering your designs prevents others from manufacturing, using or importing them. In South Africa, you can register two types of designs: aesthetic designs and function designs.

Aesthetic designs are protected for 15 years, and functional designs are protected for 10 years. You must renew the registration annually before the expiry of the third day.

You can file your design via the GlobalIPCo system for $299.

7. Digital Assets

With the increasing use of technology like artificial intelligence (AI), digital assets need to be protected. Things like software code, digital content or algorithms can be classified as digital assets.

The mentioned types of intellectual property are protected by law in South Africa. There are many things like digital assets (software code, online content etc) that are not protected by law, yet.

It is important to know what the laws there are to protect your intellectual property.

In South Africa, intellectual property can be registered or unregistered (copyright).

Patent Laws

Patents Act No. 57 of 1978 is divided into sixteen chapters. It applies to all patents within South Africa including those granted before or after the commencement of the Act.

The Act establishes the patent office that will be controlled by a registrar of patents. Further on, the Act provides for a public document that contains the particulars of patent applications.

The Act also states that a patent may be granted for any invention involving an inventive step which is capable of being used in trade, industry or agriculture. It further states that a patent will not be granted for any variety of animal or plant or any essentially biological process to produce animals or plants not being a microbiological process.

Additionally, the Act allows for international applications for patents under the Patent Cooperation Treaty.

Plant breeders need to comply with the Plant Breeders Rights’ Act No. 15 of 1976. The Act intends to provide for a system where rights relating to new varieties of certain kinds of plants may be granted and registered.

Copyright Laws

Copyright laws in South Africa are governed by the Copyright Act of 1978 and its amendments. The Act is administered by the CIPC. It outlines nine classes of work as eligible for copyright:

• Literary works.
• Musical works.
• Artistic works.
• Cinematograph films.
• Sound recordings.
• Broadcasts.
• Programme-carrying signals.
• Published editions.
• Computer programmes.

Trademark Laws

Trademarks are governed by the Trademarks Act No. 194 of 1993. The Act intends to provide the registration of trademarks, certification of trademarks and collective trademarks, and to provide incidental matters.

Included in the Act is section 34(1)(a) which determines trademark infringements. It states that any unauthorised use of a mark during trade in relation to goods/services is an infringement of the trademark.

The Act also does not include protected symbols such as the South African flag or national monuments such as Table Mountain. Emblems fall under the protection of the Merchandise Marks Act.

State emblems include:

• Seal of the Republic.
• The Coat of Arms of the Republic.
• National Monuments.
• Representations of present and former State Presidents of the Republic.
• National Flags – use may not be made of it in a trademark.

Use of state emblems is only permissible after being granted permission by the Minister of Trade and Industry, the owner of the state emblem, and the National Monuments Council.

Design Laws

Because designs are separately protected in South Africa, they fall under the Designs Act No. 195 of 1993. The Act gives the owner of a registered design control over their design for a limited time.

Under the Act, owners of registered designs can prevent others from:

• Making, using, importing, or disposing of any article that is included in the class in which the design is registered.
• Embodying the registered design or a design not entirely different from the registered design in South Africa.

Traditional Knowledge/ Indigenous Knowledge

Under South African law, traditional knowledge is protected as indigenous knowledge. This encompasses a wide range of forms of knowledge such as traditional dances, music, design, utensils, food safety etc. Indigenous knowledge is protected under existing IP laws for trademarks, copyrights, performances of literary and artistic works (Performers’ Protection Act 1967) and designs.

Commercialising your IP is when you get your products or services in the marketplace. The CIPC has outlined a few tips to help you commercialise your business.

• You can commercialise your IP on your own. However, you can also do it through a partnership or a combination of both.
• You need to maintain confidentiality when you commercialise your IP, even if you commercialise through a partnership.
• If licensing, you might have to give up the right to commercialise. However, you will not give up ownership of the IP.
• Licences to IP include trademarks and franchises.
• Another way to commercialise your IP, is to involve venture capitalists or do a joint venture with other parties or established companies.

CIPC Key Points on Licensing

• A licence is a contract in which the owner of the IP gives permission to a licensee to commercialise that IP.
• Licences cover product development, manufacturing, marketing and selling products.
• Owners of the IP rights will usually receive payments in the form of royalties in return for use.
• The value of the rights is based on the type of IP you have.
• Taking out a licence is a more cost-effective alternative to investing in development that has already been done.

CIPC Key Points on Franchising

• The franchisor owns the IP rights over the marketing, service method or special product.

CIPC Key Points on Selling Your IP

• An outright sale of your IP is called an Assignment. In the sale, you transfer your ownership of the IP to the buyer.
• An assignment must be recorded in the CIPC Patent, Design, or Trademark Register.
• If you transfer your IP ownership to someone else, you cannot impose any performance obligations on the new owner.
• An IP purchaser may look to pay royalties instead of purchasing the IP with a lump sum.

Once you have registered your IP with the CIPC, you need to know how to enforce the subsequent IP rights. This will happen if someone infringes upon those rights and uses your IP without permission.

Once you own IP, it is crucial that you monitor the market to ensure that no one is infringing upon your IP rights. If you find that your IP is being used without permission, you will need to contact an IP lawyer. The CIPC does not monitor IP infringement.

To prevent others from stealing or using your IP, you will need to keep a record of:

• What kind of IP rights do you have and in what form the right was created.
• If any material was used in the creation process, what the material is, and if the material is from a third party.
• When the IP was created and who created it
• Proof of ownership documents such as applications for patents, trademarks, or designs.
• A record of contracts with all parties involved in the creation of the IP. You must also clearly define who owns the IP.
• A log showing the creation process of the IP. This is important for IP created by employees.
• Early drafts and prototypes that exemplify the IP.
• Copies of agreements with those on whose behalf you are distributing the goods or services. This includes agreements giving distributors the right to use trademarks and marketing materials

All this information should be stored in an IP register, and you should put the backup copies in a separate and safe location.

The CIPC says you do not have any rights to trademarks when trading over the Internet. The internet is a global marketplace, so a trademark registration in South Africa does not give you rights in relation to a trademark overseas.

South Africa is a part of the World Intellectual Property Organisation (WIPO). WIPO establishes guidelines to protect trademark owners who trade over the internet.

Remember: If you trade goods or services over the internet, you can be sued for infringement in a country where someone else owns the trademark. If you own a trademark and want to trade over the internet, you should apply for international trademarks.

WIPO has a programme called the Inventor Assistance Programme. The goal of the programme is to make the patent system more accessible to under-resourced inventors and SMEs.

The programme aims to assist participants with novel inventions that have market applications but are unable to bear the costs of consulting a patent attorney to get protection for the invention.

To join the programme, you must meet the following criteria:

• Show basic knowledge of the patent system by completing the IAP training module.
• Be an SME that: earns less than R 3 000 per month after tax or an enterprise with an annual turnover of less than R 5 million.
• The invention must meet the criteria for patentability.
• The invention must have prospects for commercial success.

How can you be part of the programme?

• Apply online by clicking on the WIPO link.
• Your application will be assessed by the screening committee. The committee will give recommendations to WIPO regarding your application.
• If your application is successful, you will be paired with a Pro bono lawyer who will help you get your IP patented.

The screening committee is comprised of the following bodies:

• The Department of Trade and Industry.
• The CIPC.
• The National Intellectual Property Management Office.
• The Small Enterprise Development Agency (SEDA).
• The SEDA Technology Transfer Fund.
• The Small Enterprise Finance Agency.
• The Technology Innovation Agency.

Affordable — Sibanda & Zantwijk is a law firm that specialises in online systems to reduce IP costs. In 2018 the firm became the exclusive South African agent of the GlobalIPCo system. By using this system, the law firm is able to reduce patent costs and lower the time to courier patent certificates.

The law firm is the only one in South Africa that offers services in intellectual property commercialisation. Their services include IP law, tax, and exchange controls.

Patent Litigation — Adams & Adams

The Adams & Adams law firm is the most recommended patent litigation firm in South Africa. The firm has argued some of the most high-profile patent cases in South Africa.

Franchising – Smit & van Wyk

The Pretoria-based law firm has a division specialising in franchising. The firm is headed up by Wessel van Wyk. The firm’s Patent lawyers can assist with patent applications in South Africa and across Africa.

They provide services that cover filing, registration, prosecution, and enforcement of patents.

Plant Breeding – David Cochrane

David Cochrane is an expert attorney who specialises in filing patent applications for various industries. These include pharmaceutical, nuclear medicine, chemical, petrochemical, agrochemical, explosives, metallurgical, and biochemical sectors.

David has over two decades of experience in local and international patent matters. He has services related to the preparation and prosecution of patent applications.