Patent pending

Are attorneys the only winners when you protect your IP?

Paul Furber
By Paul Furber, ITWeb contributor
Johannesburg, 24 Jul 2015
Paulo Lopes, Sibanda & Zantwijk.
Paulo Lopes, Sibanda & Zantwijk.

Relative to our size and history, South Africa has a disproportionate number of famous inventions that originated on these shores. The CAT scan, the automatic pool cleaner, the cricket speed gun and those strangely shaped concrete blocks you see at harbours were all invented by South Africans. And like most countries around the world, the government protects the inventors so they can profit from their inventions.

Today, local inventors can protect their inventions by going to the Companies and Intellectual Property Commission's (CIPC) office in Pretoria and fi ling for patent protection themselves. A provisional patent holder Brainstorm spoke to said it's a pleasant and interesting experience, albeit somewhat time-consuming, but that both he and the CIPC recommend the use of a patent attorney.

Paulo Lopes is one such attorney. He's a partner at Sibanda & Zantwijk, a Johannesburg-based law firm that specialises in patent protection and intellectual property licensing. Lopes says his clients range from the small, right the way up to big corporates.

"We assist clients with fi ling patents both locally and abroad. They range from the typical garage inventor, through start-ups, all the way to big corporates." Lopes says local patent activity is strong.

"Innovation is coming from all over: individuals, start-ups, corporates and universities. There's been a big uptick of research and development."

South Africa's patent system is governed by the Patent Act of 1978. It grants an inventor 'an exclusive right granted for an invention, which is a product or a process that provides a new way of doing something, or offers a new technical solution to a problem'.

Certain things are excluded. Scientific theories, mathematical methods, methods for playing games or doing business, and computer programs are not patentable. If an invention doesn't fall foul of those restrictions, then the patent holder gets the right to exclude others from making, using, selling or importing the invention for 20 years.

Getting protection

Why would an inventor patent their better mousetrap? Michiel Grobler, patent attorney at Pretoria-based Hahn & Hahn, says it's about security.

"What a patent actually does is give you some security. Both small inventors and big companies fi le for protection. Smaller inventors will come to us for help so that when they go to investors and marketers to get funding, they have that security. They file a provisional patent application that gives them some protection for 12 months, which is enough time to apply for a full patent. A provisional patent gives you time to further optimise the invention and improve it."

It costs R60, plus a day of walking around.

Brent Pinkney, local inventor

Is it worth the trouble? Local inventor Brent Pinkney says yes. He has a couple of provisional patents fi led, including one for a special kind of ski slope. He is also working with partner Andrew Gaylard on another project.

"The best way to start is to get a provisional patent with CIPC," he says. "It costs R60, plus a day of walking around. It gives you priority if your patent is disclosed within 15 months. If your provisional patent lapses after 15 months, then it goes into the public domain."

Pinkney and Gaylard can't reveal what they're working on just yet. They've been advised both to be cautious about talking about their invention as well as to talk about it to everyone, and have chosen the former. Gaylard says balancing product development with the patenting process can be a bit tricky.

"You do need to do the footwork so you don't patent too early or too late. If you patent too early and you're still making changes to your invention, you have to file another patent. If you patent too late, you miss the boat. Your product should be final when you apply for a patent, but often, its development doesn't fit neatly into a 12-month window."

Hahn & Hahn's Grobler says larger companies, including international giants such as Samsung and Apple, file for patents locally because they need protection for their inventions in this country, since patents are not automatically global (see sidebar: International clout). In fact, one of Hahn & Hahn's local clients sued Apple and obtained a settlement because iTunes infringed on his patent, which was filed both here and in the US.

"In order to have a valid patent, your invention must be novel," says Grobler. "As you can imagine, we've had a boom in hi-tech gear over the last few years, so to find something that's new worldwide is not that easy."

The Gillette Defence

Grobler says if an inventor thinks a product is infringing, he needs to bring it in so that the attorneys can see the specifications that were filed. "If we find that, in terms of the specifications that were filed, it is infringing, then we send a letter of demand with an attached photo to say it's infringing. That party can then decide to carry on as before, whereupon it follows the same procedure as if a summons was issued. An infringement case is heard by the Court of the Commissioner of Patents, a division of the High Court, and may be brought either by way of Summons where damages are sought and will require oral evidence to be led, or by way of Motion, where only an interdict, whether urgent, interim or final, is sought, in which case the evidence is by way of Affidavit."

Pursuing an infringement matter is slow and expensive. "An action brought by way of Summons may take anywhere from six to 18 months before it is heard by the court of first instance, whereas an application by way of Motion may only take three to six months to be heard."

A patent holder must ultimately try to prove that a device or method includes the exact elements of the patent. Infringers have a couple of options open to them. They can deny that they infringe based on the specifications, or they can counterclaim that the original patent is invalid and ask the Commissioner to revoke it. They can try the Gillette Defence, a famous legal precedent that says a patent holder is in a Catch 22 under certain circumstances. A defendant may claim that their infringement is part of the prior art and therefore not novel, meaning the patent is invalid. If the patent is valid, then the defendant does not infringe. In other words, patent holders may not try to be too broad in their claims because they may not be entitled to patent cover, nor too narrow otherwise there can be no infringement.

All of this manoeuvering costs money. Hahn & Hahn give figures of between R324 000 and R800 000 in cases where both junior and senior counsel are appointed for the litigation. If the court decides in favour of the patent holder, then it may grant an interdict, order damages or royalities in lieu of damages to be paid and a portion of the costs incurred. However, the order of costs is usually only 50 percent of the actual costs borne by the patent holder and is entirely up to the Commissioner.

Which begs the question: is it worth it?

International clout

South African patents apply to South Africa only. To get patent protection in other countries requires validation in those countries. Brent Pinkney, sales engineer at Bytelogix and provisional patent holder, says local inventors have to patent in every country and renew annually.

"It becomes an expensive exercise," he says. "The way it works is that you fi le in South Africa. And then you apply for validation in each country. So, for instance, if you wanted your patent in Spain, you would get it translated into Spanish and then the Spanish authorities would check locally to see if it's available."

Because South Africa is a signatory of the Patent Cooperation Treaty (PCT), there is a shortcut: local inventors are able to file international applications and get patent protection in a number of overseas jurisdictions. The process is long and involved - up to 30 months - but this is generally seen as an advantage since it gives funders more time to find markets while also delaying the considerable fees involved.

Firstly, an international application is filed. Then a search is made for prior art by an International Searching Authority, which also writes an opinion on the general patentability of the invention. Eighteen months after fi ling, the patent is published by the World Intellectual Property Organisation (WIPO) and a ten-month window for comment on the inventiveness and novelty of the invention is opened to the public. Finally, after 30 months, a successful application will enter a national phase, after which the local office will grant the patent. As different countries have different laws on what can and cannot be protected by patents, the PCT says the final decision is always local.

The China Syndrome

With 1.4 billion people as a potential market, China might seem an obvious country in which to apply for patent protection.

The country is a signatory of the PCT so the recommended way is to file an international application with the PCT and then file an application directly with the Chinese State Intellectual Property Office (SIPO) within 30 months. But it's costly, says Paulo Lopes, patent attorney and partner at Sibanda & Zantwijk. "We have clients that have filed in China. But it's expensive because of the translation costs. For example, to file a patent in Australia can cost anything between R15 000 and R22 000. In China, it's between R40 000 and R50 000."

China also has a reputation for ignoring foreign IP rights while aggressively defending its own. Lopes says that is changing rapidly.

Local inventor Brent Pinkney says that the perception is wrong anyway. "I've heard that the 'Chinese steal everything'. So you ask what was stolen and they say, 'Everything!'. So I ask them whether they opened a case, and they say, 'No'. So they're telling me that 1 400 million people who can't agree on anything have somehow got together to steal everything from the West. When Brett Peach, one of my project team who has patented his foldable wakeboard around the world, found that someone was using his invention in China, his patent lawyer found the reciprocal lawyer in China, who apologised."

Peach now gets royalties from China.

This article was first published in Brainstorm magazine. Click here to read the complete article at the Brainstorm website.