Forward momentum
Patent prosecution in South Africa rarely favours the inventor, but recent reforms are aiming to change that, one little bit at a time

With the new Intellectual Property Consultative Framework for South Africa fresh off the approval press, reforms to the country’s IP policy appear to be firmly on the horizon.

The framework is expected to assist in the stimulation of South African innovation—the largest proposed reform being the incorporation of substantive examination in South Africa.

Substantive examination would slow the trend of patents being granted purely on administrative requirements being met, a practice that results in poor quality of patents, according to a paper by Doctors Without Borders, the Treatment Action Campaign, and Research and Information Systems for Developing Countries.

Further, the framework is an attempt to provide discussion points for proposals of reforms to IP law in South Africa.

These proposals are stimulatory aspirants that intend to draw commentary from experts in the field of IP in an attempt to create a series of reforms that work for South Africa.
With that in mind, several patent attorneys have weighed in on the proposed changes to South African policy.

Free and non-discriminatory

Tertia Beharie and David Gilson of Spoor & Fisher suggest that the IP Consultative Framework aims to “facilitate what will be a continuous engagement with governmental partners and society at large towards the reformation of South Africa’s IP policy”.

“The most fundamental objective is that South Africa should consider implementing substantive patent examination and make allowance for pre- and post-grant opposition of patents.”

“Currently, South Africa has a deposit-based system with no opposition procedure.”

As part of the considerations for adopting substantive examination, several models are being evaluated, including the introduction of online patent searches and substantive examination that combines partial recognition of search and examination reports conducted in foreign offices, with full examination in certain fields.

The framework suggests that full examination will be conducted with respect to pharmaceutical technologies in view of the South Africa’s public health interest.

However, Beharie and Gilson say that they are not entirely certain that this distinction between fields would entirely comply with the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

They argue that policy should be “free of discrimination from technology fields”.

Moreover they are “not certain that it will have the effect of promoting innovation”.

“It seems to us that substantive examination will be costly to implement and maintain ... it will also take much longer for patents to be granted, which will undoubtedly increase patenting costs, that may stifle local innovation.”

“Currently, a patent is granted within one year and an applicant does not have to incur the costs of substantive examination, which can take up to five years or longer if there are delays.”

“A patent can only be enforced once it is granted. Therefore, it will be more difficult for all patentees to obtain enforceable patent rights.”

A progenitor of change

According to Nicky Garnett of Adams and Adams, the majority of African countries do not conduct substantive examination, with capacity issues putting substantive examination on hold.

It may take several years before the South African Patent Office is able to effectively examine applications in all technical fields, Garnett explains.

Wilhelm Prozesky of Adams and Adams says this is due to a constraint in resources from the Department of Trade and Innovation (DTI).

While Beharie and Gilson may see preferential treatment of specific technical fields as stifling innovation, Doctors Without Borders believes that a focus on medicines can both make them more widespread and available, and create a steady income for the state.

A Doctors Without Borders paper, Why South Africa Should Examine Pharmaceutical Patents, cites the example of the Indian patent office’s annual revenue, which is considerably higher than its annual expenditure.

Patent reform campaign group, Fix The Patent Laws, hopes that the Indian method can be adopted during proposals in South Africa, both to enable easy access to drugs and to generate a steady income for the South African Patent Office.

Anti-innovation?

Andre van der Merwe, director at Kisch IP, says that “while South African patent attorneys may welcome this move because of a self-interest, that is, increased fees for them, substantive examination has, in the past, not generally been supported as causing an increase in patenting costs for patent applicants”.

As an answer this this, van der Merwe notes that proposals have been made to the DTI to consider hybrid examination systems that lodge foreign examination reports and responses, to amend claims in line with amendments made in foreign jurisdictions.

However, he says that the DTI and its policy makers are determined to implement search and substantive examination instead, to ensure that pharmaceutical patents are not granted for frivolous inventions or to avoid cases of so-called ‘ever-greening’.

“The first step towards such implementation has been taken by the DTI, namely the appointment of a number of technically-qualified personnel. Training of these persons has begun in South Africa and abroad—and it appears that their initial training is directed at them being employed firstly as searchers to establish the state-of-the-art for each application and its invention.”

“In the meantime, the patent office may refer patent applications to one or possibly more foreign patent offices, such as the European Patent Office, for substantive examination.”

Van der Merwe goes on: “I should point out that the South African Patents Act does make provision for substantive examination of complete patent applications—but these provisions have, to date, not been implemented by the patent office, both in principle and practically, because of the lack of skilled technical personnel.”

Van der Merwe says he is unsure how the IP Consultative Framework will promote innovation in South Africa, if at all, and suggests that the industry will simply have to wait and see how the discussions unfold and develop.

But he does acknowledge that the future of innovation is important, and outlines another system in place: the national development plan, which calls for a “greater emphasis on innovation”.

Although, he also concedes that the IP Consultative Framework does not provide guidelines for implementing this plan.

“What is somewhat concerning is that this framework does not provide an unequivocal commitment to a strong IP policy and approach for South Africa,” van der Merwe says.

“It rather suggests that there should be an examination of striking or achieving a balance between creators and users of IP—more particularly with an emphasis on promoting access to public health and patented drugs.”

“This approach or bias in favour of public medicines appears to hark back to the HIV/AIDS pandemic and the high court application of PMA v President of the Republic of South Africa et al, some years ago, to challenge the legislation limiting patent rights to medicines, which did not proceed to a hearing.”

“The background for that case was the urgent need for AIDS anti-retro viral drugs in South Africa at the time—and thankfully that pandemic and its treatment are no longer a problem.”

Van der Merwe concludes: “The list of areas for immediate and later review in the framework is to be generally supported.”

“However, it is submitted that suggestions to limit Inter Parte Reviews are not in South Africa’s overall best interests.”

Third parties have up until 30 September to submit comments to the South Africa DTI regarding the framework.

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