Overview on Patent Reforms in South Africa. Mr Trod Lehong 14 September 2017 Adams & Adams

Transcription

1 Overview on Patent Reforms in South Africa Mr Trod Lehong 14 September 2017 Adams & Adams

2 National IP Policy There are a number of government departments that are in someway responsible for the registration of IP rights. No overarching IP policy to prescribe how IP should be managed in South Africa. Draft National IP policy was approved by Cabinet in The Draft National IP policy was heavily criticized for being incoherent, inconsistent and impractical. The IP Consultative Framework was approved by Cabinet in July 2016 as a basis for the development of the National IP Policy.

3 National IP Policy cont. The IP Consultative Framework adopted a consultative approach to developing a National IP Policy. Formation of an Inter-Ministerial Committee on IP. Broader consultation with both local and international stakeholders (WIPO, WHO, UNDP, RSA Law firms, industry, government departments). Phased approach to dealing with IP issues, i.e. short term and long term objectives. Draft IP Policy was approved by Cabinet on 3 August 2017.

4 National IP Policy cont. The IP Policy in its broadest sense looks to address the following short term issues: Local manufacture and export in line with industrial policy, Patents substantive search and examination, Patent opposition, Patentability criteria, Disclosure requirements, Parallel importation, Exceptions, Compulsory licenses, IP & competition law.

5 Filing Stats South Africa receives on average nine thousand (9000) applications a year; 10% are local applications (first filings); about 75% are national phase or foreign applications (second filings) and Electronically and/or manually Inefficient workflows Duplication of work about 15% are patent applications originating from South Africa, filed abroad.

6 Depository System Section 34 of the Patents Act Provides as follows: The registrar shall examine in the prescribed manner every application for a patent and every complete specification accompanying such application or lodged at the patent office, in pursuance of such application and if it complies with the requirements of this Act, the application, he shall accept it. Regulation 41 of the Patents Act Provides as follows: The registrar shall examine the application accompanied by a complete specification in order to ensure that it complies with the prescribed formalities.

7 Depository System cont. Section 25 of the Patent Act stipulates for what a patent "shall not be granted" and lists a number of things which are not considered to be an invention. The Patents Act does not however provide a mechanism for rejecting an application that is not an invention, or an application that does not meet the requirements for patentability on the merits e.g. insufficiency of the content of the description and claims, matter outside of the patentable scope, lack of novelty; lack of inventive step or industrial applicability. The filtering function is transferred to Courts which cause delays and is costly to the applicant.

8 Substantive Search & Examination Applications are examined as to formalities and substantively to determine if the requirements for patentability have been met. Substantive Search and Examination provides some level of certainty and brings the function that is currently performed by the Courts inhouse. There is provision for opposition systems to ensure that quality patents are granted by the Patent Office. Third party observations Post grant oppositions Pre-grant oppositions

9 Patent Examiners Recruited Examiner Highest Expertise Qualification Anathi A. Njokweni PhD Plant Biotechnology Bheki B. Zulu MSc Physics Charmain Gazide Honours Chemistry Denise Le Noury PhD Biochemistry Enos Khameli BTech Electrical Engineering Gnineka Mbambisa PhD Chemistry Hastings H. Cele PhD Physics Keitumetse Potgieter PhD Plant Biotechnology Kerileng KM. Molapo PhD Chemistry Maanda Phosiwa MSc Molecular Biology/Biochemistry Machele M. Mokgalong Honours Mining Masisange Mketsu MSc Biochemistry Mehluli Ncube MSc Physics Morore Mphahlele PhD Medical Science Myda Visser Honours Information Technology Ncedile Madlanga PhD Biotechnology Thandanani T. Cwele PhD Chemistry Thobeka Kente PhD Chemistry WIPO academy: Distance Learning courses; Witwatersrand University; South African Institute of Intellectual Property Law; Japan (sponsored by HIDA/JPO & WIPO, 10 examiners in 2016 and 8 in 2017); Russia (3 examiners sponsored by RosPatent); China (2 examiners - sponsored by SIPO); Austria (2 examiners - sponsored by the Australian Patent Office and WIPO); The UK-IP office spent two weeks training examiners in Pretoria; The USPTO spent one week training examiners in Pretoria; and India (3 examiners sponsored by CIPC and BRICS).

10 Training of Examiners Several IP offices (Austria, China, India, Japan, Russia, UK Patent office and USPTO) have assisted in the training of the examiners. The examiners have also received training from WIPO, the South African Institute of Intellectual Property Law (SAIIPL) through the Patent Board Examination (PEB) and the Witwatersrand University. CIPC has signed a MoU with the European Patent Office (EPO) as a strategic partner to provide training to its examiners on SSE. EPO is regarded as one of the best patent offices in the world, and the development of our law follows English law, which make the EPO a suitable partner in the training of our examiners. The training of our examiners is scheduled to commence in September 2017, for a period of two years.

11 Registration Processes We have signed a Memorandum of Understanding (MoU) with the World Intellectual Property Organization (WIPO), for a Proof of Concept (PoC) of the Industrial Property Automation System (IPAS). IPAS Java is an information system designed to streamline the processing of trademark, patent and industrial design applications, and later modification of registers, covering most of the operations side of the work done by an IP. Our intention is to evaluate the effectiveness of IPAS in the automation of our patent registration processes. The project for the evaluation of IPAS was launched on 25 May 2016.

12 Technology Fields Table above illustrates some of the important fields to consider in the recruitment of examiners in capacitating SSE.

13 Policy Considerations The implementation of SSE will be informed by the Industrial Policy Action Plan (IPAP) and the Department of Trade and Industry (Dti). The Dti through the Inter-Ministerial Committee of IP (IMCIP), will further advise on the key strategic fields in which applications for patents will be examined. Clear from discussions at multi-forum discussions that the focus is on pharmaceutical patents. Government objectives of striking a balance between public health and access to medicines and the rights afforded to inventors.

14 Quantifying Numbers The tables below illustrate the requirements for establishment of SSE.

15 Career Progression Judged on completion of work products i.e. a completed search or an examination report. Progression determined by a number of factors such as, the years of experience, the production targets, the quality of work, complexity and other functional skills acquired by the examiner e.g. finance, legal services, management, leadership etc.

16 Quality Management The work of examiners work must be assessed at all times to ensure quality and consistency.

17 Questions THANK YOU!!