A lo­cal view:

Un­der­stand­ing domestic rules

Finweek English Edition - - INSIGHT: INTERNATIONAL -

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

er partn Will

our our

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.

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