BUSINESS BRIEF: SOUTH AFRICA
BUSINESS BRIEF: SOUTH AFRICA Patents
How do you register or secure patent rights, and is national or international coverage most appropriate?
An applicant should consult a patent attorney as soon as possible, who will prepare a patent specification on the assumption of, or aſter an investigation into, the inherent patentability of the invention. Te patent specification will then be lodged, in accordance with a strict timeline, in those countries where patent protection is required, bearing in mind that patent rights are national rights.
What are the costs for obtaining a patent, and what are the costs of defending it?
Spoor & Fisher offers very competitive rates for the draſting of
patent specifications, ranging
from R12,000 ($1,600) to R25,000 ($3,300). Te cost of filing a complete or national phase patent application in South Africa is typically in a similar range. It should be appreciated that the preparation cost is dependent on the type of invention and more complex inventions will necessitate higher draſting fees. South Africa is a non-examining country.
Insofar as foreign patent protection is concerned, the cost of filing an international (PCT) and foreign patent
application may be anything between
R15,000 ($2,000) and R85,000 ($11,400), depending on the country, length of the specification, foreign associates charges, etc. Aſter the filing of a foreign application, high prosecution costs should be expected in each country. Depending on the nature of patent
litigation, costs could range between R700,000 ($95,000) and R2 million ($267,000).
Where can you find information on existing patents in your jurisdiction? Te Companies and Intellectual Property Commission (CIPC) website has a searchable online database:
http://patentsearch.cipc.co.za/patents/ patent.aspx. It is important to note that the status information on the database is not always accurate.
What are the key threats to patent owners, and what is the best strategy if you suspect someone is infringing your patent?
Infringement is a key threat. If there is suspicion that a third party is infringing your patent, a local patent attorney should be consulted without delay. Te patent attorney will then send a non-threatening letter (known as a Section 70 letter) to the alleged infringer in order to make them aware of the patent rights. Revocation proceedings brought against a patent by a third party is also a potential threat.
Trademarks
How do you register or secure trademark rights, and what protection does it grant? Trademark rights can be divided into two categories: statutory rights and rights afforded by common law. In order to secure statutory trademark rights, a trademark proprietor must register its mark as a trademark with the CIPC. Statutory rights are the strongest rights that can be secured in a trademark and lay the basis for the most effective and least expensive way of enforcing rights in a mark. Common law rights are acquired through the actual use of a trademark, namely the reputation, goodwill and general association that develops.
128 World Intellectual Property Review Annual 2013
Alternatively, a manual search may need to be conducted through the paper patent records at CIPC.
Is there anything unusual about the patent law that companies should know? What are the most common mistakes businesses make?
South Africa is a non-examining patent office and a patent in South Africa will be granted without any substantive assessment. Te onus is therefore on the patentee to ensure that the patent is valid and enforceable. Amendment of the patent specification is possible before and aſter grant of the patent.
Tere is a nine-month moratorium aſter the grant of a patent, during which proceedings may not be brought against an alleged infringer. Tere is no extension of the patent term in South Africa.
What are the costs for registering a trademark, and what are the costs of defending it?
Spoor & Fisher offers competitive rates in assisting clients with trademark registration. Te cost of registering a trademark generally varies depending on the requirements subject to which the Registrar of Trade Marks may be willing to accept an application for registration or a possible opposition to the registration by a third party. If no difficulties are experienced in the registration process, the total costs are likely to be in the region of $900 to $1,150. All costs relating to the enforcement of a trademark will vary on a case-by-case basis.
What are the key threats to trademark owners and what is the best strategy for dealing with infringement?
A variety of scenarios can arise that may require a trademark owner to enforce its rights. Tese include: • Infringement/passing off-type matters whereby an unauthorised party uses an offending mark that is likely to create confusion or deception in the trade (this includes anti-counterfeiting);
• Te use and/or registration of an offending domain name by an unauthorised party; • Te registration of a company or
close
corporation name where an identical or confusingly similar trademark is already registered in the name of another party; and • Trademark oppositions.
Te best strategy will differ from case to case, eg, infringement proceedings to be dealt with in the High Court, domain name objections before the relevant domain dispute resolution authority, company and close corporation name objections before the Registrar of Companies and Close Corporations
and trademark oppositions
before the Registrar of Trade Marks. Generally, all contentious matters have as their first step the sending of a cease and desist or other appropriately worded letter of demand.
www.worldipreview.com
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