As a patent attorney in private practice, over 2 decades I received many calls and emails starting with the statement “I want to patent my copyright”, or “I want to register my brand as a patent”. It became clear to me that many creative people hear the words patent, trade mark, copyright, Intellectual Property, and IP and know they need these rights, but don’t understand what they encompass or how to obtain them.
What are the main Intellectual Property Types and What Does Each Protect?
Intellectual Property is an umbrella term for all the various types of protection available for the creative endeavours of humans and the main types of Intellectual Property, often abbreviated as IP, are Patents, Trade Marks or Trademarks, and Copyright. These types of IP are protected by laws in South Africa such as the Patents Act 57 of 1978, Trade Marks Act 194 of 1993 and the Copyright Act 78 of 1978. Under each of these laws there are regulations with the detail of how these rights are obtained and managed, for example the Patent Regulations.
Other countries have their own laws to protect IP, for example, United States Code Title 35 – Patents available on the US Patents and Trademarks Office website .
According the CIPC in South Africa, a trade mark distinguishes you from other people in the same line of work, and gives you an identity in the market place. Goods are things that can be manufactured, such as a radios, clothing, medicine, cosmetics, jewelry and cars. Goods can also be perishables, such as plants, meat, milk, fruits, and vegetables. A service is work done by a person or a group of people for other people. Some examples are a restaurant, a construction company and a food delivery service.
Although registration of a trade mark is not compulsory, and an unregistered trade mark does provide some protection under the common law, it is most advisable to apply for registration, because registration provides an effective basis for stopping infringement and others from appropriating and registering your trade mark. Registration is also a guarantee of immunity to registered trade mark rights of any other party. Use by the applicant of the trade mark prior to the application for registration, presents no bar to valid registration. Such use can sometimes strengthen the position of a trade mark.
A trade mark is registered in one or more classes into which the goods and/or services fall. In principle, a trade mark registration only protects the owner of a trade mark and prevents use of same or similar trade marks in the class in which a trade mark has been registered, although there is some protection against registration by a third party in classes similar to the goods or services in which trade marks have been registered. A trade mark must be registered for goods or services falling in a particular class in accordance with the prescribed classification, e.g. class 25 for clothing, footwear and headgear, class 5 for pharmaceuticals and class 42 for the Internet services. The classification is an international one used in all countries and can be found on the CIPC website under “Trade Mark classification of goods and services”.
A trade mark, once registered, is valid indefinitely but must be renewed every 10 years otherwise it will expire. Some trade marks have been in existence and renewed every 10 years for over 100 years and are still in-force and used today.
Entrepreneurs often confuse company names, domain names and trade marks and are of the mistaken belief that their company name protects their brand, or that the domain name they have registered somehow protects their brand, or worse, that they can get one over on a competitor by registering their brand as a domain name and setting up a competing website.
The fact that you have registered a company name does not automatically mean you have a right to the that name as a trade mark or that you can even use that name on your products or stationery if someone else has registered it as their trade mark. The Commissioner of Companies does not check whether there is an existing trade mark when registering a company name and, this makes perfect sense when one considers that trade marks are registered in one of the classes and could thus be used for completely different goods or services than the company is trading in. Similar considerations apply to domain name registrations, however, a registered trade mark and proof of use thereof can assist in objecting to a domain name being used in an abusive manner, for example, to unfairly compete with a trade mark owner and can be grounds for having the domain name transferred to the trade mark owner if not used in a lawful manner.
An entrepreneur should ideally register their trade mark, domain name and company name at the same time to avoid conflicts later.
According to the World Intellectual Property Organisation a patent is an exclusive right granted for an invention in the country where a patent has been granted, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem. To get a patent, technical information about the invention must be disclosed to the public in a patent application. The right is granted for a fixed period of time, typically such as in South Africa, for 20 years from the date of application for the patent and subject to annual renewal (maintenance) fees being paid by the due date. In some other countries the term is slightly longer than 20 years and in the USA, for example, the patent term is adjusted to exceed 20 years if the processing of the patent by the Patent Office takes longer than expected.
The patent application has to include a description of the invention which discloses the invention sufficiently so that it can be performed by a person of ordinary skill in the art in question without further substantial experimentation having to be done. Many inventors baulk at this but it should be seen as a deal which the inventor and the state strike i.e. for disclosing the invention to the world fully you get an exclusive 20 year right to exploit the invention whereafter the invention belongs to the world i.e. forms part of the state of art that anyone can use without compensating the patent owner.
The patent application also has to include a section entitled “Claims” where the specific new and inventive aspects of the invention which are being claimed as being the exclusive right of the patent owner are described in a prescribed manner and this is the portion of the patent which is referred to when there are allegations that a patent has been infringed by a third party.
In South Africa, the patentee can, if infringement of the claims of the patent can be proven, get an interdict against an infringer and claim damages for any losses suffered. In some other countries there is also the possibility of punitive damages and other damages claims.
It should always be borne in mind that patents are territorial in nature and a patent only grants rights in the country where it has been granted. The popular term “world patent” is based on a fallacy. “World patents” do not exist. Instead separate protection must be applied for in each country individually, although there are procedures that can be followed which can reduce the complexity thereof, for example, by filing a Patent Co-operation Treaty patent application which is an international patent application which, however, does not become an international patent but requires national patent applications in each country where patent protection is required based in the Patent Co-operation Treaty application.
A patent does not offer any protection for brands, logos, or identifying marks used in trade, and to obtain protection for these a Trade Mark application is required as discussed herebelow.
Get in touch with us should you wish to obtain a patent.
According to the CIPC in South Africa, copyright is an exclusive right granted by law for a limited period to an author, designer, etc. for his/her original work. Unlike other forms of intellectual property, copyright does not need to be registered, except for cinematograph films where registration is possible although not mandatory.
What type of content enjoys copyright protection? The Copyright Act 78 of 1978 protects certain classes or categories of works. For a work to be eligible for copyright protection, it must be original and be reduced to material form. The following works are eligible for copyright in South Africa (in the Republic).
As can be seen, matter which can be protected by a patent, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem, is not the same as matter which is subject of copyright.
There is however a degree of overlap between trade marks and copyright to the extent that the artwork or literary work which is the trade mark is also protected by copyright. Copyright, however, is obtained automatically by its creation and under international treaties is international to a large extent so that a copyright eligible work created in South Africa and made available by or on behalf of the creator is protected in all treaty member countries without the need for registration and no costs. It is however possible to obtain registration in certain countries like the USA so as to ease enforcement of copyright, but it is not mandatory.
The best news about copyright is how long it is valid for, and in South Africa currently the duration of copyright is the life of the original creator and fifty years from the end of the year in which the author dies. In other countries, like the USA, copyright in certain works can extend for much longer, for example, according to the US Copyright Office, works made for hire and anonymous and pseudonymous works, the duration of copyright is 95 years from first publication or 120 years from creation, whichever is shorter (unless the author’s identity is later revealed in Copyright Office records, in which case the term becomes the author’s life plus 70 years).
A patent is an exclusive right granted to an inventor or the inventor’s successor in title, referred to as the patentee, for a period of time, typically 20 years from the date of application for the patent, but subject to annual payment of a renewal fee, usually from the third year after the application date until the date of expiration of the patent. There are some exceptions to the above renewal rule, for example, in the USA where renewals are not paid annually but according to a different schedule until expiry thereof.
In most countries, such as South Africa, a patent expires permanently when it reaches 20 years from its application date. In that 20 year period, to be in force, a renewal fee is paid to the patent office and if this renewal fee is not paid when it is due or during any permitted extension period, typically with a fine, then the patent will lapse, not expire.
Under certain circumstances a lapsed patent which has not yet expired can be restored. Lapsing of a patent should not be taken lightly as it has consequences on the enforceability of the patent even after it is restored in terms of Sections 47 and 48 of the Patents Act 57 of 1978 and it may be that a person who commences use of a patent while it is lapsed cannot be stopped after the patent has been restored or must be compensated for their efforts and expenses. In some countries it is not possible or extremely onerous to restore a lapsed patent and proof of the reasons beyond the control of the patentee for lapsing of the patent must be provided, however, the burden of proof is high so it is critical to pay the renewal fees before they fall due. Finally, to be clear, an expired patent is permanently expired and cannot be renewed, revived, or refiled as it would not meet the patentability requirements of novelty and inventive step.
Unlike in South Africa, renewal fees referred to as maintenance fees on US patents are due 3.5, 7.5 and 11.5 years after grant of the patent (in South Africa and many other countries, they are due every year and are called renewals, renewal fees, or annuities). They can be paid for an additional six months after the due date with a surcharge (this actually is a provision of the Paris Convention).
The USPTO provides a web application to view the payment windows for each maintenance fee.
In certain countries, such as South Africa, a patent which has lapsed unintentionally may be restored if there has been no undue delay in bringing the application for restoration, and it can be shown that the lapsing was unintentional, and there is a good reason to restore the patent and it is valuable to the patentee.
It is not considered a good reason that the patentee could not afford to pay the renewal fee or just forgot, and a patentee of a lapsed patent would need to show evidence of not being aware of the need for the renewal e.g. a renewal notification from their patent attorney being lost in the mail, ill health at the time of the renewal fee falling due, confusion during the transfer of a patent from one patentee to another, or the like. The application for restoration must be accompanied by an Affidavit explaining the failure to pay the renewal fee, the lack of delay, and requesting restoration of the patent.
In the example of South Africa, if the Registrar of Patents is satisfied that the omission was unintentional and that no undue delay has occurred in the making of the application, he shall advertise the application in the prescribed manner, and any objector may within two months of the publication, give notice of opposition to the restoration of the patent. If there is no opposition, the Registrar shall restore the patent and then the arrear renewal fees must be paid and the patent will once again be in force and future renewal fees will once again be payable. If there is opposition to the application for Restoration then the application will be heard in the Court of the Commissioner of Patents who, after considering the evidence and legal arguments as in any Court Application, will decide the matter and either restore the patent or dismiss the application for restoration.
Where a patent has been restored, any person who, during a period starting 6 months after the lapsing of the patent, has expended any money, time or labour in view of making, using, exercising, offering to dispose of, disposing of or importing the invention, may apply in the prescribed manner to the Commissioner for compensation in respect of the money, time and labour so expended. The Commissioner may, after hearing the parties concerned, assess the amount of such compensation if in his opinion the application ought to be granted and determine the time within which such compensation shall be paid. Any amount so assessed shall not be recoverable as a debt or damages but, if it is not paid within the time determined by the Commissioner, the patent shall lapse.
The requirements for the restoration of a lapsed South African patent include first and foremost the requirement that once you become aware of the patent having lapsed for failure to pay a renewal fee, you contact your patent attorney immediately and commence the restoration procedures without any undue delay. Whether a delay is undue will depend on the circumstances, for example, where a patent forms part of a deceased estate it may be that the party having to apply for restoration of the patent is not immediately apparent and the Executor of the estate may not even be aware of the patent or the requirement for the payment of renewals. In short, there is no specific prescribed period for applying for restoration of a South African patent from the date of its lapsing but in many countries there are hard deadlines which, if missed, lead to irrevocable lapsing of the patent, typically 1 year from the date of the due renewal fee which was missed.
Once you have realised that the patent lapsed and this was not your intention and you have contacted your patent attorney to apply for restoration thereof, you will need to collate all your documents which show that the lapsing was unintentional and that there has been no delay in bringing the application, for example, an incorrectly addressed renewal notice from a patent attorney addressed to a deceased person, to a person who has changed their address at their old address, or a copy of a renewal notice from the files of the patent attorney but which was not received by the intended addressee or at all as testified to by means of an Affidavit to which the letter is attached.
Your patent attorney will advise you and assist you with the preparation of the Affidavit and which documents to attach thereto and will then prepare Notice of Motion requesting restoration of the lapsed patent and attaching the Affidavit thereto for consideration by the Registrar of Patents, and possibly an objector if any third party decides to object to the restoration of the patent.
If the Registrar believes a good case has been made out for restoration of the patent then notification of the application will be published for a period of two months in the Patent Journal and any person may object thereto in the prescribed period and provide their Affidavit of reasons as to why restoration is being opposed, for example, that the patentee has unduly delayed the bringing of the application for restoration or that the lapsing was intentional e.g. a decision not to renew the patent to save costs but now the patent is deemed as valuable because circumstances have changed. Additionally, an objector may raise that they have commenced preparations to use the patent or are actually using the patent as from a date 6 months after the lapsing thereof and seeks compensation.
The Registrar will issue a Certificate of Restoration of the patent if the requirements are met and there is not opposition by an objector, at which time all arrear renewal fees will have to be paid. If there is opposition then the matter will be moved to the Court of the Commissioner of Patents where the Application for Restoration will be heard in accordance with the Court Rules and Procedures as modified by the Patents Act and Regulations which can take from a year to several years and incur costs of many hundreds of thousands or even millions if the matter goes to Appeal.
In the USA, if your patent has expired due to non-payment of maintenance fees, you can apply to revive it, provided you apply within two years from the end of the six-month grace period. Your petition for revival must be on the grounds that the non-payment was either unintentional or unavoidable. You must explain in the petition that you took reasonable steps to ensure that the payment was made on time and that you filed the petition promptly once you realized that it wasn’t paid. In the case of an unavoidable lapsing there is, however, no deadline.
In South Africa, as well as in some other countries, it is possible to pay patent renewal fees for the lifetime of the patent in advance. With the exception of the risk of missing the first renewal fee, if renewal fees are paid for the lifetime of a patent then the risk of lapsing of the patent will not arise once this payment has been made. The costs of a renewing a South African patent for life is also cheaper than paying 17 individual renewal fees and the costs are fixed at a low base and insulated against future patent office fee increases. US patents maintenance fees cannot be paid more than 6 months before the due date.
Another way to reduce the risk of missing a patent renewal is to place your patent attorney in funds with a deposit and request that patent renewal fees should be paid automatically as they arise. This will reduce but not eliminate the risk of lapsing of a patent but patent attorneys have sophisticated diary reminder systems for renewal payments and thus reduces the risk substantially as long as they are given the funds in good time to pay the renewal fees. Ideally, the patentee should also keep a diary of all due renewal dates.
Finally, many patents lapse due to patentees relocating, changing the person responsible for renewals within their organisation, or merging with or acquiring another company and not notifying the patent attorney of these changes so that the renewal notices which are routinely sent out by patent attorneys do not reach the patentee or the person within the organisation responsible for maintaining their patent portfolio and attending to the payment of the renewal fees.
If you realise your patent or a patent you have acquired has lapsed, contact us for assistance with evaluating the situation and advising on the possibility of restoring the patent and, if possible, with preparing and bringing the restoration application without delay so that the patent can be restored and once restored to ensure timeous payment of renewal fees for the remainder of its validity period until it finally expires 20 years from its application date.