The South African patents system is governed by the Patents
Act, 1978 which affords protection to patents for inventions
(including patents of addition). The absence of novelty
vitiates a patent absolutely in South Africa and protection
is refused obvious inventions. Unless a complete specification
is filed in the first instance a priority date is established
by an application accompanied by a provisional specification.
Applicants deciding to pursue protection thereafter must
file a fresh application accompanied by a complete specification
within fifteen months of the date of filing of the provisional
application claiming priority from that date. Examination
is to form only and no examination on the merits takes place.
The patent term is twenty years from the date of filing
of the complete specification. A patent must be renewed
every year from the fourth following the filing date. For
more information please click
Trade Marks Act, 1993 (as amended) governs the South African
trade mark registration system. Distinctive signs of all
kinds and descriptions which are capable of graphical representation
are registrable as trade marks. The forty two classes of
goods and services of the International Classification is
followed. The statute is generally compatible with the European
Directive concerning trade marks and affords protection
against unauthorised use of both identical and confusingly
similar marks in relation to the goods or services in respect
of which a mark is registered and in respect of similar
or dissimilar goods or services in defined circumstances.
For more information please click
is conferred by the Copyright Act, 1978 without registration.The
Act protects literary, artistic and musical works, sound
recordings, cinematographic films, computer programmes,
radio and television broadcasts, satellite transmissions
and published editions. The categories of persons who are
afforded copyright protection are defined in the Act and
include foreign persons and incorporated bodies from member
states of the Berne Convention.
Designs Act, 1993 provides protection to aesthetic and functional
designs through registration. Functional designs have features
which are necessitated by the function which the article
to which the design is applied is to perform and includes
integrated circuit topography and mask works related thereto.
Aesthetic designs relate to designs applied to articles
of manufacture because of the pattern, shape, configuration
or ornamentation of the design which is judged solely by
the eye. Aesthetic designs must be new and original while
functional designs must be new and not commonplace. For
more information please click
Africa is the only country on the continent of Africa which
is a member of the UPOV Convention. This has the effect
that South Africa is bound to give protection to Plant Breeders'
Rights of nationals of other continents of the world, whilst
the rest of the countries on the African continent are not.
The rights cover propagating material for the relevant variety
as well as harvested material, including plants. These exclusive
rights consist of the production or reproduction of the
aforementioned plant material, the conditioning thereof
for the purpose of propagation, the sale or any form of
marketing thereof, as well as the exporting, importing and
Biotechnological Intellectual Propertyand The Protection
of Genetically Modified Crops (Gmc's) under the RSA Patents
Act (No.57 of 1978) and/or the RSA Plant Breeders' Rights
(PBR) Act (No. 15 of 1976).
of these articles are available on request to mailto:email@example.com
Counterfeit Goods Act provides enhanced means for dealing
with counterfeit goods, especially at ports of entry to
South Africa. The Merchandise Marks Act, 1941 deals with
prohibited marks, the marking and covering of merchandise
and false trade descriptions and marks.
& Hahn Inc prides itself on its many international clients
and to facilitate relations with our clients we are able
to communicate in English, German, French, Korean, Dutch,
Polish and Czech. Hahn & Hahn Inc also provides sworn translation
services for translations from and to, French and German.
from Capital Gains Tax (CGT) requirements, significant tax
advantages may be realised when acquiring a business which
owns intellectual property. In particular, the South African,
UK and Australian tax regimes provide that any company purchasing
intellectual property (excluding trademarks) is entitled
to deduct the purchase price from its pre-tax earnings over
the lifetime of the intellectual property. Please note that
the company would still be able to depreciate the intellectual
property whether or not it takes advantage of the above
Whilst companies often spend considerable amounts on securing
intellectual property rights, experience has shown that
a proper valuation of such intellectual property, in particular
the technology aspects thereof, is rerely carried out. By
properly reflecting the intellectual property as an asset
in the balance sheet as required by the Generally Accepted
Accounting Practices (GAAP), a company could significantly
improve its shareholder value and benefit from an often
neglected, yet important source of value creation.
the valuation of a company's intellectual property will
often bridge the gap that typically exists between the marketing
and financial departments of large companies. For example,
the marketing and R & D departments could justify their
expenditure on advertising, research and promotional activities
to the financial department by putting a value to the IP
arising out of their efforts.
note that our IP valuation service is available to clients
all over the world.
& Hahn Inc has over 50 years experience in all aspects of
IP litigation including infringement and validity cases
for patents, trademarks and designs, as well as acting in
counterfeit goods, unlawful competition and trade secrets
matters. Please contact Janusz Luterek (firstname.lastname@example.org)
for further information in this regard.
Patent Infringement and Validity of Granted Patents
Infringement and Defences Thereto In order to be successful
in an infringement matter in South Africa a patentee must
show that an infringing device, system, apparatus, or method
includes all of the essential integers of at least one independent
claim of a patent.
In defence, an alleged infringer can deny infringement or
rely on invalidity of the patent on any one of the grounds
set out in Section 61 of the Patents Act 57 of 1978 and/or
on use prior to the priority date of the patent in question
i.e. the so called "Gillette Defence".
Furthermore, an infringer can counterclaim that the patent
in question is invalid and request the Commissioner of Patents
to revoke a granted patent.
The patentee may, where there is subject matter in the patent
which could form the basis for a valid patent, apply to
the Commissioner for leave to amend the patent which, if
granted, will result in the scope of the patent being reduced
but the amended patent being valid. This may or may not
get the infringer off the hook as the amended patent may
still be infringed.
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
in most cases. An action brought by way of Summons may take
anywhere from 6 to 18 months before it is heard by the court
of first instance whereas an application by way of Motion
may only take 3 to 6 months to be heard.
is usual to appoint counsel (barristers) to assist in the
litigation. Depending on the complexity of the matter, both
a junior and a senior counsel may be appointed. Thus it
is not unusual for a matter in which only a junior counsel
is employed to cost between EUR25000 and EUR62500 in the
court of first instance, and the same costs may be expected
in each stage of an appeal.
an infringement action, besides an interdict, the court
may award damages, or reasonable royalties in lieu of damages,
and a portion of the costs in suit. Please note however
that an order of costs usually only covers about 50 % of
the actual costs incurred and are awarded at the discretion
of the Commissioner of Patents.
order to be valid, the claims of a South African Patent
must be novel and inventive and all formal requirements
ought to have been complied with.
novelty requirement is an absolute requirement i.e. an invention
as claimed should be new anywhere in the world, not just
in South Africa.
Likewise, the inventive step requirement is an absolute
South African Patent Office is a non-examining office and
all patent applications which meet the formal requirements
is not normal practice for Patent Attorneys to conduct patent
searches for clients unless specifically instructed to do
so as the costs of the searches would often exceed the costs
of preparing and filing the patent several fold.
the South African Patent Office records are in a complete
disarray and it is not possible to conduct a reliable search
for South African Patents at the South African Patent Office.
further, international databases which may be searched cover
only the major countries of the world and have only scant
information on South Africa, especially data prior to 1994.
Thus, even an extensive international patent search does
not have a guaranteed accuracy and it is internationally
accepted that, despite the high cists thereof, database
searches have an accuracy of around 60%.
validity of a granted patent may only be challenged by way
of an Application for Revocation before the Court of the
Commissioner of Patents and again, depending on the complexity
of the matter, both a junior and a senior counsel may be
appointed. Thus it is not unusual for a matter in which
only a junior counsel is employed to cost between EUR25000
and EUR62500 in the court of first instance, and the same
costs may be expected in each stage of an appeal.
Dunlop, Vanessa Lawrance, Janusz Luterek, and Victor Williams
have been appointed as adjudicators on the ZA Domain Name
Authority domain name dispute resolution panel with Alan
Dunlop, Janusz Luterek and Victor Williams being appointed
as Senior Adjudicators. For more information on lodging
a dispute with the Domain Name Authority regarding a .co.za
domain name please see www.domaindisputes.co.za.
Where we are not acting as adjudicators we are able to
represent clients in such disputes.
are specialists in the commercialisation and taxation
of intellectual property. Apart from our practical experience
in this regard, we have also prepared the training workshops
for SARS personnel.
Intellectual property is a field that has long been ignored
by SARS.However, the days of immunity have passed. Having
skilled up in this area, intellectual property has now
become a focus area for SARS.
few of the intellectual property related tax risks are
discussed in the articles on our website, such as: allowances
for the acquisition of intellectual property; nature of
royalty payments; "roll-up" licences; deduction of up-front
royalty payments; accrual of royalty payments; transfer
pricing; etc. However, please bear in mind that these
articles are intended merely to raise awareness of certain
issues.They cannot and do not canvass all potential intellectual
property related tax issues.
addition, we have extensive experience in structured finance
transactions using intellectual property (which have recently
been tackled extremely successfully and aggressively by
SARS) and would be pleased to assist you by providing
objective opinions on such structures.
provide tax-related advice on:
licensing of intellectual property and the deductibility
of royalty payments, including:
nature of royalty payments;
deductibility of royalty payments;
structuring of upfront royalty premiums and royalty payments
determination of royalty rates;
transfer pricing considerations in international agreements;
apportionment of "royalties" in licences that provide
for the provision of technical services, ongoing research
and development (R&D) and the use of intellectual property;
withholdings tax payable on royalties;
beneficial ownership of royalty receipts;
VAT issues relating to licences;
accrual, and taxation of royalty receipts.
available for the acquisition of intellectual property,
allowances may be claimed;
types of intellectual property that fall within our
of allowances that may be claimed;
in which the purchase price for intellectual property
should be paid; form in which assignment agreements
should be drafted.
available for R&D, including:
work conducted falls within the scope of the R&D section;
for the purchase of equipment; - options for the acquisition
or construction of buildings;
the R&D should be spun
into a separate company;
of existing R&D programs/structures/arrangements;
manner in which R&D should be funded;
tax consequences of R&D agreements (in particular the
termination of such agreements);
structuring of R&D expenditure where foreign entities
of alternative/additional R&D allowances in other countries.
more about the R & D Tax Relief Law Amended 7 June 2007