A local view:
Understanding domestic rules
Brian Wimpey, the head of intellectual property at Norton Rose, offers a South African perspective on the problem.
Inventors ( be they companies or individuals) with a new product often do not have the resources to commercialise it effectively. In these circumstances an inventor partners with an organisation that has an existing commercial network and/or the right synergy to effectively exploit the product, but obviously the inventor needs to protect the fruits of his skill and labour.
Inventors rely on IP, an often imperfectly understood term, to protect his or her idea in circumstances like these, but as will be apparent, he or she needs to be aware of the strengths and weaknesses of IP protection.
Legislation in South Africa protects the “big four” t ypes of IP by virtue of various Acts, namely, t he Patents, Designs, Trade Marks and Copyright Acts. Patent law allows for the registrat ion of an i nvention that is new and port r ays an i nventive step ( but excludes c o mputer s o f t - wa re). The Designs Act
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IP? protec t s aest het i c a nd f unct i ona l designs while t he Trade Marks Act protects, in effect, brands. Copyright protects the embodiment of ideas in, among others, literary, musical, artistic a nd c i nematog r aphic work s , a nd includes software, but does not protect the ideas themselves.
In the context of our example, if an inventor developed a new and unique widget, which saved fuel in motor cars by 20%, he or she would register a patent for the gadget and secure 20 years of monopoly rights over its exploitation.
Equally, if a new and aesthetically pleasing gri l l e shape for t he l atest model of luxury car was developed, the inventor may be able to register a design that would offer 15 years of protection. In either case, the inventor would enter into a l icence with the car manufact urer and be relatively secure i n t he knowledge t hat he or she can effectively manage the use of the patent or design.
The licensing of software for a drive management system is a little less easy to manage. Assuming t hat t he car manu facturer requires the source code for the soft ware in order to successfully integrate the inventor’s management s y s t e m w i t h the f o r mer ’ s operating system, the inventor’s control over the software is less than compelling. Naturally, the inventor will have recourse to the copyright act to prevent the manufacturer from developing its ow n s of t wa r e from the source code, but in the r a r ef i ed a i r of cyberspace, proof of “copying” may be diff icult to unearth and the inventor may become entangled in years of litigation.
Larger difficulties arise when the IP in question is not protected by one of the “big four” Acts mentioned above, but consists of a new business plan or confidential information that can only be protected by an agreement between the parties. The agreement will furnish t he i nventor r ecourse a ga i nst t he manu facturer i f a breach occurs, but not against a third party who is the recipient of the information. Put bluntly, once the know-how leaks, there is very little the inventor can do.
The beauty of statutory protected IP i s t hat it s dispersal i nto t he public domain does not (with a few exceptions) lead to its destruction.
A f i nal caution for t he i nventor involves jurisdiction. Protection afforded by a patent, for example, is confined to the country where the patent is registered. If the inventor is in SA and contracts with a manufacturer in Nigeria, the manufacturer can happily exploit the inventor’s patent in Nigeria for its own ends unless the patent is registered in that country. Only copyright has a multi-jurisdictional reach.