Thursday, 31 July 2008

'Clerical errors' and Calvinball: a disappointment for Lundbeck

In South Africa the Court of the Commissioner of Patents has handed down its 20 June judgment in Lundbeck v Cipla Medpro which deals with escitalopram (a substance that has recently been the subject of judgments in the UK, Australia, Germany and the USA). In short, patent owner Lundbeck makes an antidepressant, CIPRALEX, the active ingredient of which is escitalopram -- an enantiomer of citalopram. Lundbeck sought two things: the amendment of what it maintained was errors in two of its patent's claims and an interim interdict against Cipla Medpro, to stop it selling a generic escitalopram product in South Africa.

Although argument was heard on the validity of claim 1, this judgment deals only with whether certain admitted errors in claims 6 and 7 could be corrected as “clerical errors”. These errors had been found in all the corresponding patent specifications in the early 1990s. Lundbeck had corrected/amended the errors in other jurisdictions at that time, but had not done so in South Africa. The issues addressed in the judgment are thus somewhat different to those addressed in the judgments in relation to the corresponding patents in other countries.

Two of the three errors related to the designation of a (+)-enantiomer of an intermediate (in each of claims 6 and 7), while a proper reading of the specification revealed that the process described in the body of the specification used the (­)-enantiomer of that intermediate. Lundbeck argued that the errors were “clerical errors”, and that the court should therefore simply correct these errors under section 50 of the Patents Act and grant the interdict. Lundbeck also argued that, in the event the court found the errors not to be “clerical”, the court should grant the “corrections” by way of an amendment under section 51 (the difference between correction of clerical errors is important, as an amendment under section 51 cannot be granted if the claims of the patent after amendment would cover matter which was not previously covered by the claims of the patent before amendment).

The difficulty faced by Lundbeck was that the draftsman of the specification was dead, and there was no direct evidence available as to how the errors arose. Lundbeck filed affidavits by experts who stated that the skilled addressee would have recognised the errors, and would have realised that the references to one enantiomer in each of the claims were meant to be references to the opposite enantiomer [Perhaps by hidden operation of the Calvinball “opposite pole” rule?] Cipla Medpro’s experts agreed that the claims contained errors; and Cipla Medpro argued that the patent was invalid for, inter alia, lack of fair basis as a result of these very errors. None of Lundbeck’s experts provided any explanation as to how the errors could have arisen. However, in 1993, the inventors had made a declaration to the USPTO in support of an application for re-issue of the corresponding US patent, in which they stated that corresponding errors in the US patent had apparently arisen as a result of “unfamiliarity with, or poor choice of, nomenclature” by the now-deceased in-house patent agent.

In the circumstances, Southwood J found that
* Lundbeck’s failure to correct the errors, knowing that they affected the validity of the patent and all the while maintaining its patent monopoly, constituted good reason for refusing the corrections;
* There was no evidence that the errors were in fact “clerical” in nature, and they could thus not be corrected under section 50;
* The corrections sought by Lundbeck had the effect of broadening the scope of the claims, and were thus not permissible as amendments under section 51.
Having refused to make the corrections/amendments sought by Lundbeck, the court refused to grant an interim interdict against Cipla Medpro.

This information was kindly supplied by Tim Ball (Brian Bacon & Associates).

"DSTV is Killing Nollywood" - CBC's efforts

Popular actor, Emeka Ike, has claimed that Digital Satellite Television (DSTV) , has contributed immensely to the woes of Nigerian Movie industry, Nollywood. The actor, who claimed he is now worth N3 million or more noted that the advent of DSTV’s Africa Magic has drastically short-changed Nigerian actors. In his words; “DSTV is one of the greatest woes of Nollywood. They play our movies back-to-back until they lose their economic value. And they don’t even pay us royalties.” “When you ask them, they will tell you the producer has signed out the movie to them. They have come to short-change us and it has killed the movie industry.” He, however called on the government to fund movie marketers in order for the industry to develop. Source: http://www.nigeriafilms.com

This news quip illustrates the importance of a business project which the Commonwealth Business Council is organising in Nigeria in October this year in collaboration with the Nollywood Business Forum (NBF). It is to be a two-day event focusing on the critical issues confronting Nollywood as it attempts to achieve its artistic and business potential. The CBC is looking at an interactive Business Round Table on 17 and 18 October, immediately after the opening of the London Film Festival and a Nollywood Academy day on 19 October which will culminate in their first Oscar-style awards (the Crystal Awards) that evening. Peter Longworth, Director of CBC and ex High Commissioner to Zimbabwe is helping to set up the event and explains that "The conference is the first of its kind aimed at addressing these issues and enabling Nollywood to achieve its potential. We reckon it is 15 years behind Bollywood, but could catch up in five."

Afro-Ip was introduced to this story by licensing specialist, Mary-Ellen Field.

Wednesday, 30 July 2008

The Inaugural Indigenous Knowledge Systems Exhibition and Workshop

Thanks to Wim Alberts (Bowman Gilfillan), Afro IP has learnt that next week (4th-9th of August) the Department of Science and Technology has organised an Expo on Indigenous Knowledge Systems (IKS) in the Transvaal Museum in Pretoria entitled: "THEME FUTURE OF IKS BEYOND 2010". Each day different speakers will discuss issues related to IKS (agriculture, education, music, intellectual property rights). The programme can be found here and includes an array of interesting topics such as:

"Indigenous Knowledge System beyond 2010;"From Farmer to Pharma"

"Leveraging Knowledge Management within the Continent"

"Bioprospecting at CSIR: New drugs and herbal products from medicinal plants"

"Science & Technology creating wealth and job opportunities for the Disadvantaged though the use IKS"

"The Impact Of Intellectual Property System On Indigenous Knowledge: Possible Solutions."

"The Hoodia case as a practical example of traditional knowledge of plant use leading to benefit sharing agreements under the Biodiversity Act."

For related (and unrelated) posts on traditional knowledge affecting Africa click here.

Tuesday, 29 July 2008

The (w)rath of the TAC

This news quip from Legalbrief has caught the eye of Afro Leo following the decision last month in Treatment Action Campaign and Another v Rath and Others (12156/05) [2008] ZAWCHC 34 (13 June 2008) concerning unlawful clinical trials, false or misleading advertisements and the legality of the distribution of the products Vitacor Plus, Epican Forte, Lysin C Drink Mix and VitaCell in South Africa.

"In a country where the Minister of Health considers beetroot to be a more effective remedy for HIV-AIDS than anti-retrovirals, it is just as well we have an organisation such as the Treatment Action Campaign (TAC) to champion the cause of the poor, sick and downtrodden. It has done – and continues to do – amazing work in its battle against a government in denial. When last month it finally won its bid to rein in the activities of vitamin entrepreneur Matthias Rath – the Cape High Court banned Rath and his Rath Foundation from conducting unauthorised clinical trials in SA – it was not difficult to choose the TAC as our June nomination for the Legal Newsmaker of the Year award. The award, launched by Legalbrief Today in association with the Law Society of SA, recognises those who have made an outstanding and newsworthy contribution in the field of law – and few will argue the TAC has done just that."

The TAC’s (successful) complaint was that Rath (and others) carried out activities which risk the health and lives of people with AIDS. The TAC alleged that Rath (and others cited as respondents) "sell and distribute medicines which are not registered, sell products containing scheduled substances; make false and unauthorised statements about efficacy of their medicines in treating or preventing AIDS; conduct unauthorised and unethical clinical trials on people with AIDS; and make false statements that ARVs are ineffective in treating AIDS, and are poisonous and they discourage people with AIDS from taking medicines which are an essential element of an effective treatment programme."

The two parties have been at loggerheads in the past when the TAC won an action against Rath for defamation see decision here.

Monday, 28 July 2008

Namibia: New Industrial property Bill to be passed by end of Year


AllAfrica's Brigitte Weidlich reports that the Ministry of Trade and Industry is pushing for the Industrial property bill to be passed by end of the year. This bill will provide protection for trademarks, patents and industrial designs.

According to Mr. Edward Kamboua the Director of commerce, the new law is important as the existing legislation was set in colonial times and times have changed. According to him it has therefore become necessary to change the laws due to changes in the Economy and imperatives of Namibia's membership in the WTO. According to him, "The bill makes Namibia compatible with the World Intellectual Property Organisation (WIPO) treaties, conventions and protocols that Namibia has signed."

The bill will provide for the registration and administration of intellectual property such as establishment of an Intellectual Property Office, and a Tribunal as well as standards that must be met by agents handling these matters.

"Global Copyright Act Law": the case of Malawi

Kandani Ngwira ("Music artists or music parasites"), writing earlier this month in Malawi's The Daily Times, describes how Joseph Tembo’s song ‘Mbuje’ received wide media condemnation because it was 'carbon-copied' from a foreign composition, the Botswana song 'Mbupuje'. COSOMA -- the Copyright Society of Malawi -- banned the song from radio stations, but it was still being played in bars and in private listening. Comments Ngwira, citing other instances of this 'borrowing':
"It would appear artists in the country are adamant and have become lazy and copy songs in its entirety. ...

Perhaps, the great irony in this trend is that these musicians complain when people pirate their music yet they themselves are found to be at the forefront of stealing other people’s property.

In fact some artists have even gone ahead to win music awards with such parasitic music. ...".
He also quotes the opinion of Joy Radio DJ, Ken Klips, who probably reflects quite closely the legal perspective of performers in his country:
"[T]o copy another person’s song per se is not a crime because there are big time stars who do that at the international stage.

... what constitutes a crime is to copy without following procedures like making an agreement with the original musician or at least representatives of the musician.

“Our musicians do not consider contacting the owners of the original songs and I think it is just sheer laziness on the part our artists. They have intellectually retired from being creative so that they have resorted to parasitic tendencies. They just want to become famous over what others have already done which is very bad”.
Klips also calls for stiffer discipline from COSOMA and the Musicians Association of Malawi (Mam). He opines: "“Mam should discipline their members and studio producers should stop tolerating such duplicated music. Radio stations too should stop playing songs by local artists if they are sure that the piece has been illegally copied from other artists, although sometimes it is difficult to notice that the song is duplicated". COSOMA denies being soft on its members and says that the law is enforced when an infringement clearly occurs. Its Licensing Officer adds that there is a process that must be followed if artists want to copy foreign beats and that Cosoma facilitates the process using "Global Copyright Act Law". I have been unable to track this law down. Can any readers help?

Friday, 25 July 2008

Fridaylite: Talula Does The Hula From Hawaii

Don't like your name? A judge in New Zealand has handed a young girl an award of court so that she could change the name she hated - Talula Does The Hula From Hawaii. Judge Rob Murfitt said that the name embarrassed the nine-year-old and could expose her to teasing. He attacked a trend of giving children bizarre names, citing several examples. Officials had blocked Sex Fruit, Keenan Got Lucy and Yeah Detroit, he said, but Number 16 Bus Shelter, Violence and Midnight Chardonnay had been allowed. One mother wanted to name her child O.crnia using text language, but was later persuaded to use Oceania, he said.

The article (by the BBC and courtesy of Warren Weertman) has attracted much attention including amusing commentary from Russell Sprout, Ftango Molasses, Craig Gogay, Laslo Panaflex, Jenna Dana Bananarama Rater, Mr D Vine, Slick Bryn Davies, Egnorwiddle Waldstrom and a school friend of Justin Kayce.

Enjoy here. Post by Laurence Olivier - my only claim to fame.

Thursday, 24 July 2008

Aspen Pharma and Glaxosmithkline enter licensing deal

Iafrica.com news reports that Aspen Pharma of south Africa and GSK have sealed a licensing deal.

According to the report, Aspen , the leading drug giant in Africa will produce finished pharmaceuticals and therapies ready to use as a result of the IP from GSK. The licensed market crucially excludes Sub-Saharan Africa and India but covers other emerging markets. Product development will be carried out by Aspen and Onco Therapies, a company in which it owns 50% shares in a joint venture with Strides Arcolab of India.

From Aspen's Group Chief Executive, the benefits are clear as the agreement will "extend the worldwide reach of the Aspen business benefiting from GSK's excellent strength in branding and marketing." In his words, "GSK will achieve effective distribution for products in many countries which Aspen is presently unable to reach."

Products from this arrangement are expected to hit the market in 2010.

Zimbabwe Currency under threat!



In a threat like no other that President Robert Gabriel Mugabe and his economic wizards have faced, Buzzle.com reports that security printers may be forced to stop printing Zimbabwe's currency.

The problem stems from trade sanctions and unrelenting pressure against Mr.Mugabe's regime, largely from the US and EU states opposed to his unique style of leadership. Giesecke & Devrient the German firm that has been providing watermarked paper for Harare's Fidelity Printers & Refiners was forced to stop exporting the paper last month by the German government. The Zimbabwe government is now apparently looking at alternative printers in Malaysia or China.

In case the Malaysian option is being considered seriously, what is currently of great concern to the Government is the likelihood that the printers' software license may be revoked by the licensor as a means of enforcing the ban. Amidst an ever weakening Zimbabwe dollar, civil service and army wage bills are pending payment. Failure to ensure continuous printing of watermarked currency notes could severely lead to a hemorrhaging of the financial system and further undermine the economy. Unfortunately, Buzzle reports that the officials responsible for the software contract at Jura JSP are 'away on holiday'!

Amidst this storm, one wonders whether the compulsory licensing provisions under the TRIPS agreement would offer any help to Zimbabwe in this time of need. Is there legal or other compelling reasons for circumventing digital rights management measures if the Government of Zimbabwe had the software?

If ever there was a case that clarifies the importance of intellectual property rights, this one clearly does.

2010 FIFA World Cup digital broadcasting rights dispute

Following the Afro-IP post last month entitled 2010 World Cup Music Rights: whose right? Afro Leo has learnt from The Star this morning that there is another skirmish over rights relating to the World Cup.

Digital Horizons, a SA based black owned company has lodged an urgent application in which it asked the court to prevent the SABC ,the national broadcaster, from concluding a deal with Sony over the digital broadcasting rights. A committee appointed by the SABC board to look for a company which could partner the public broadcaster had earlier recommended that the R383m tender be awarded to Digital Horizons. However, the court heard that the board chose to ignore the negotiating team's recommendation. ‘The decision to award the tender to Sony was not taken by the full SABC board,’ Digital Horizons argued. The SABC board said Sony's bid was R66m (about $8.5million) less than Digital Horizons' quote. Judge Moroa Tsoka agreed with the SABC that the matter was not urgent and called on both parties to make formal presentation in court on 12 August. Disputes over rights at this fairly late stage will not do anything to promote 2010 event, which is already hampered by international concerns over safety and readiness.

Wednesday, 23 July 2008

Good causes - SAIIPL's National Women's Day Lunch

The South Africa Institute of Intellectual Property Law (SAIIPL) is celebrating National Women's Day* on 1 August 2008 by hosting a lunch for members of the Institute and in the process raising funds for the Bathokwa Primary School* whose requirements include:

 Sepedi Books – basic books with local content (all grades)
 book bags / strong plastic bags for library books
 a loose carpet for the library (3m x 4m)
 cushions / small bean bags for the library
 hosepipe(about 20-30m) and compost for the vegetable garden
 net for volleyball court
 paint and volunteers to re-paint murals on the classroom walls
 any toys(for grade 1) and sport items(soccer balls, shin pads, soccer boots in particular, but anything is welcome) that you may have at home
 grey school shorts for the boys (all sizes)
 food items(soya mince, tinned vegetables, sugar, milk powder, tea/coffee, mealie meal/samp, jam/peanut butter)

The organiser is Mariette Du Plessis (Adams & Adams) and the person responsible for collections is Marie-Louise Grobler (SAIIPL), contactable at saiipl@icon.co.za.

*Bathokwa Primary School is located in Atteridgeville near Pretoria. This school, like so many others in South Africa, is hampered by lack of funds and basic teaching necessities (and even simple living necessities). Donations are welcome.

*National Women's Day is an annual public holiday in South Africa on August 9. This day commemorates the national march of women on this day in 1956 to petition against legislation that required African persons to carry the "pass", special identification documents which curtailed an African's freedom of movement during the apartheid era.

Libya urged to seek new solar energy patents

Writing in The Tripoli Post ("Korean-Libyan Solar Energy Cooperation: Is this the Start of a Libyan Solar Energy Policy?"), Sami Zaptia looks at a press release describing the involvement of Libya's Renewable Energies and Water Desalination Research Center (REWDRC), Korea's Electronics and Telecommunications Research Institute (ETRI) and Korean research firm KONES in the development of a new solar generating system. The author then observes:

"The press release informed us that a total of US $10 million will be invested - US $5 million from Libya and US $5 million from the Koreans - over the next five years. ...

The press release also mentioned that the Koreans had registered numerous local and world patents protecting their technology. This is where the big money is made. Libya must put itself in the forefront of this market and try to start and encourage incubators in the solar energy field.

I am sure that there are many young technologists out there seeking seed capital to follow-up nascent ideas. Many will prove failures, but some will go on to become world beaters - hopefully. The trick is to sort out the potential money makers from the losers.

Libya can only become a serious player in this sector by being in the center of this sector. It must be in the game to be able to benefit early and relatively cheaply, rather than having to pay big money for patents later in the game owned by big business. Of course, there are no guarantees that anyone of the many potential technologies under development out there today will be the successful one. There is a lot of risk in trying to back a winner at the early stage. But you have to be in it to have a chance of winning it – or at least being in the top group of the solar technology nations. That is why I feel that the kind of investment outlay in the solar energy sector must move up substantially. ...

If Libya is serious about moving from the stage of tentative research into high level solar energy production, then real, serious long term strategies and investments need to be made sooner rather than later. ...

Libya may be just beginning to wake up to these facts, and may be -- just maybe --beginning to take this subject seriously. Certainly from the sound of the press statement from Korea it is."Many North African nations are preparing for 30 and 40 years from now," said Lee Un-jang, a manager at KONES. "They know this very well, so the REWDRC have established very good research and development facilities. Now they need the technology and know-how to use them", he said to the Korea Times. ..."

It will be interesting to see how, in terms of developing innovative products and negotiating IP rights, the REWDRC fares. Korea has become an increasingly adventurous and sophisticated manipulator of IP rights, to its great economic benefit -- but its success has also been based upon a highly extrovert trading policy,a well-disciplined workforce and a competitive work ethic. If Libya wants to become a technological power in the region or beyond, it must appreciate that IP rights confer an advantage but do not confer success by themselves.

Advanced Tuberculosis Vaccine receives Wellcome boost

The Wellcome Trust and Aeras Global TB Vaccine Foundation have agreed to provide GBP 8 million in funding for Phase IIb clinical trial that is expected to commence in 2009. The vaccine candidate, MVA85A, has been granted orphan drug designation by the European Medicines Agency (EMEA). If successful, MVA85A would be the first new vaccine licensed to prevent tuberculosis in over 80 years according to a press release by Emergent BioSolutions Inc. The clinical trial will take place in Cape Town.

On the face of it this is good news. Tuberculosis is the most common cause of death in people living with HIV in Africa and a major cause of death elsewhere. The number of new cases of tuberculosis has more than doubled in countries with high HIV prevalence in the past 15 years according to the press release. However, problems with access to drugs and counterfeits on the continent threaten to erode the benefits of this initiative.

The University of Oxford and Emergent BioSolutions Inc. announced that they have formed a joint venture, The Oxford-Emergent Tuberculosis Consortium Ltd. (the "Consortium"), to further develop MVA85A, the world's most clinically advanced vaccine candidate for the prevention of tuberculosis. The University of Oxford, through its technology transfer office, Isis Innovation Limited, has exclusively licensed the MVA85A tuberculosis vaccine candidate and related technology to the Consortium. The Consortium will work with the Aeras Global TB Vaccine Foundation to evaluate the efficacy of MVA85A in infants in a Phase IIb clinical trial anticipated to begin in 2009. The trial will take place at a clinical trial site developed by Aeras and the University of Cape Town's South African Tuberculosis Vaccine Initiative (SATVI) in Worcester, South Africa. The Consortium has secured GBP 8 million (approximately $16 million) from The Wellcome Trust and the Aeras Global TB Vaccine Foundation to fund this Phase IIb trial. Under agreements with the Consortium, Emergent BioSolutions has the rights to commercialize the MVA85A vaccine. The Aeras Global TB Vaccine Foundation will have distribution rights in the developing world to ensure availability and access to the vaccine to those who need it.

Tuesday, 22 July 2008

West African States meet to strategise on Counterfeits


Accra, Ghana is the venue for a current meeting whose purpose is to lay strategies for dealing with counterfeits in West Africa.

Running under the theme "Protecting the consumer against counterfeit products through inter-agency and sub-regional collaboration", Happy FM reports that this two day meeting will focus on stemming the tide of counterfeit medicines, cosmetics and medical devices in Ghana and West Africa as a whole.

In the speech of President Kufour read by the Chief of Staff and Minister for Presidential Affairs, the President reiterated the concern that "counterfeit goods deny genuine products of their rightful market share, costs government significant amounts in lost tax revenue, threaten jobs and create lack of consumer confidence in products", vowing to render Ghana a "no go zone" for counterfeits.Furthermore, it is hoped that these efforts will help the country to comply with international standards set by the World Intellectual Property Organisation(WIPO), the World Health Organisation(WHO) and the International Trademark Association(INTA).

This new initiative must be applauded as another effort in the crack down on dangerous medicines and health related devices that pose grave danger to people(and animals)all over Africa.

Houston, we have a problem

Another depressing but insightful study on the magnitude and impact of counterfeit goods in Tanzania has revealed that between 15 and 20 per cent of goods circulating in the domestic market are counterfeit products valued between 450 and 600 million US dollars (about 900bn/-) per year. The study entitled ‘Counterfeit and Substandard Goods on the Tanzanian Economy; the case of Manufacturing Sector’, by the Confederation of Tanzania Industries (CTI) (website under construction at time of post) estimates that the country incurs losses of between 15 and 25 per cent of current total domestic revenue due to counterfeit imports. The goods mainly originate from countries like China, India, the United Arab Emirates and Indonesia. Others are Taiwan, Thailand and some African contries like Kenya, South Africa, Tanzania, Mozambique and Malawi. For the full Daily News article click here. Excerpts incude:

"According to the CTI Director of Policy and Advocacy, Mr Hussein Kamote, the findings from the study were intended to inform the policy process. Mr Kamote appealed to the government to take corrective measures on the counterfeiting problem. “The low incomes of law enforcement officers, the low risk of being arrested and charged for corruption and the market appetite for both counterfeit and sub-standard goods make it a lucrative business,” said Mr Kamote."

"The law that governs the importation of goods and trading in the country is a stumbling block to the fight against counterfeits; the Merchandise Act that was unveiled in 1963, never came into force until 2005. Tanzania has several institutions that are important in any effort directed at addressing the problem of counterfeit and substandard products. The main ones are Tanzania Food and Drugs Authority (TFDA), Tanzania Bureau of Standards (TBS), Business Registration and Licensing Agency (BRELA), Tanzania Revenue Authority (TRA), Fair Competition Commission (FCC), and Attorney General’s Chambers (AGC)."

Afro-IP has published numerous reports on counterfeit studies in Tanzania (and surrounding territories) all of which come to the same conclusion. There have been steps to address the dire situation as reported here but more clearly needs to be done.

Monday, 21 July 2008

Progress on ESA discussions over EPAs

Members of Eastern and Southern Africa (ESA) and the European Commission met last month to discuss "contentious issues" as the two trading blocs apparently inch closer to the conclusion of a comprehensive trade deal. The European Union (EU) and the African Caribbean and Pacific Countries are negotiating for an Economic Partnership Agreement (EPA), in line with World Trade Organisation’s reciprocity rule. ESA and the EC met in Brussels last month where they discussed contentious issues such as Most Favoured Nation clause, Safeguards and Export Taxes. There were also discussions on Intellectual Property Rights, Competition, Sustainable Development, Investments and Government Procurement. Under the WTO agreements, countries cannot normally discriminate between their trading partners. Granting a member special favour (such as a lower customs duty rate for one of their products) has to be applied for all other WTO members. The EC is due to come back with a joint text on investments and Intellectual Property Rights detailing both parties’ interests. The EC and ESA agreed on joint texts on Sanitary and Phytosanitary services; Technical Barriers to Trade; and Trade Facilitation. The next meeting is due to take place in September. Most African countries were unable to conclude comprehensive EPAs and opted for interim agreements in order to avoid trade disruption that could result from failure to conclude WTO compatible arrangements by the deadline of 31 December, 2007. To date the EU has concluded EPA talks with the Caribbean bloc while in Africa it has concluded interim EPAs with regional blocs and individual member countries. (Source: The Standard)

For earlier Afro-IP postings on EPAS click here and here.

Friday, 18 July 2008

Turning Piracy to your advantage

An article in The Economist has caught the eye of our friendly Afro Leo who feasts on so much, often depressing, news about piracy statistics on the continent. This article entitled "Look for the Silver Lining" illustrates some of the ways in which companies can turn piracy to their advantage such as by:

a. using the frequency of piracy which in turn indicates demand, to help negotaite terms for legitimate deals;

b. noting how piracy generates brand awareness in new markets for legitimate after sales service and supply of goods; and

c. noting how pirates improve models for local markets before making them legitimate.

The conclusion bring us back to reality: "That this silver lining exists should not obscure the cloud. Most of the time, companies will decide to combat piracy of their products by sending in the lawyers with all guns blazing. And most of the time that is the right thing to do. But before they rush into action companies should check to see if there is a way for them to turn piracy to their advantage"

For the full article click here.

Thursday, 17 July 2008

SEACONET launched

Seventeen African ministers of arts and culture have officially launched the newly formed Southern and Eastern Africa Copyright Network (Seaconet) in a bid to strengthen regional collaboration and cooperation in the field of creative industries, copyright and related rights. The group includes Angola, Botswana, Kenya, Lesotho, Malawi, Mauritius, Madagascar, Mozambique, Namibia, Seychelles, South Africa, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe. It will act as a regional organisation where issues relating to the promotion and protection of creative industries, copyright and related rights can be discussed. The announcement came at a 30 May ministerial meeting held in Lilongwe, Malawi. During the meeting the secretariat and the executive council of Seaconet were elected. It consists of Yustus Mkinga from Copyright Society of Tanzania as president, Serman Chavula from Copyright Society of Malawi as secretariat. The executive council members include Peter Wasamba from the Reproduction Rights Society of Kenya , John Max from the Namibia Society of Composers and Authors of Music, Joel Baloyi from the Southern African Music Rights Organisation, and Kenneth Musamva from Zambia as copyright registrar officer. Source : Intellectual Property Watch.

Afro IP would welcome comment on how SEACONET will interface with the ACA2K Network.

Wednesday, 16 July 2008

please call me - and pay me

The SA Times reports that a Vodacom ex-employee is planning to sue the network operator. He apparently alleges that he was inadequately compensated for the development of the 'please call me' text service, which asks recipients to call the sender. From a legal viewpoint, one hopes that the matter proceeds to hearing, as decisions on ownership in the South African copyright context are rather thin on the ground.

SA: gas containers - latest unlawful competition case

South Africa's latest reported unlawful competition case was handed down last month in the High Court as Totalgaz Southern Africa v Solgas (Pty) Ltd and Another; Easigas (Pty) Ltd v Solgas (Pty) Ltd and Another (22007/2006; 2006/23048) [2008] ZAGPHC 170 .

This was an appeal concerning commercial activities around the business of steel pressurised liquid petroleum gas (“LPG”) cylinders bearing certain identification marks. It is an interesting decision because it involves a defence based on custom and illustrates the difference between passing off (by omission) and unlawful competition which tend to be used interchangeably, sometimes in error. It is also a timely decision as South Africa is in its winter months and has recently endured a period of unreliable electricity supply, raising the demand for safely supplied LPG in cylinders.

The appellants (Totagaz & Easigas) contended that they, together with the other major wholesale suppliers of LPG, sell LPG through the “cylinder market” where they supply their products in a manner which allows them to retain ownership of their cylinders. The practice is that when a supplier or distributor receives in exchange for LPG filled cylinders, cylinders belonging to another supplier it returns them to that supplier, receiving in exchange such cylinders as that other supplier may have belonging to him. Then, if a number of empty cylinders exchanged do not match, the recipient of the greater number will pay the current deposit price on the empty cylinders received which exceed those delivered by it.

The appellants as owners of their cylinders contended that they are entitled to prohibit the respondents (Solgas and another) from using their cylinders and to their return. The appellants relied on Section 10(2) of the Practice of the South African Bureau of Standards 019 of 2001 Code which deals with “persons competent to fill containers” requiring permission of the owner of the container/cylinder which had not been given.

The respondent asserted that the trade usage or custom negates any claim that the appellants may have to ownership of the cylinders. In the alternative, the respondents contended that if the appellants retained ownership of their cylinders, the appellants’ claim to ownership may be refuted by reason of the usage, circumstances and manner in which customers come into possession of the cylinders. The respondent also claimed that the appellants and all suppliers have “tacitly and/or impliedly, if not expressly, consented to them ... filling its cylinders when requested to do so by customers in possession thereof and to return such filled cylinder to the customer”.

In upholding the appeal, the court held that the custom or trade practice that the respondent claims to exist has simply not been established by evidence. In particular the practice which the second respondent claims in his affidavit exists, has not been "uniformly observed, is not reasonable, and is definitely not certain". Consequently, the contention that the appellant’s true motive is to prevent lawful competition was simply incorrect. The Court also upheld the express permission requirement under the Code, which had not been granted in this case.

The case contains a useful summary of the law pertaining to custom and unlawful competition in South Africa. (Darren Olivier, Bowman Gilfillan)

Tuesday, 15 July 2008

Africa's Top 500 Companies

Nicholas Norbrook reporting for The Africa Report, a glossy bi-monthly publication, states that "in a context of heightened global demand for African commodities from oil to copper, it is easy to forget that one of the few industrial drivers of the day on the continent is its countries own domestic consumption. Apart from being a small consolation in these uncertain economic times, the growth of the internal market has created new opportunities for local non-commodity companies to spread their wings. Governments can do a lot to stimulate the rate of consumption, but in every country the private sector now plays a role of growing importance".

The list which ranks the companies by turnover on the basis of a questionnaire sent to 9000 companies registered in Africa mentions the following in the top 10:

Sonatrach (hydrocarbons), Old Mutual (insurance), The Bidvest Group (retail), Sanlam (Insurance), Sasol (Chemicals), Imperial Holdings (diversified), Telkom (telecoms), MTN Group (telecoms), De Beers Consolidated Mines (mines) and Barloworld (diversified).

The growing importance of the private sector will not come as a surprise to those on the continent who deal with theses companies every day but it may to many outside the continent who still see Africa only as source of raw materials, cheap labour and commodities.

Monday, 14 July 2008

Tanzania to conduct study on impact of Counterfeit goods

According to The East African newspaper, the Tanzania Food & Drugs Authority(TFDA) will soon conduct a study to establish the manufacturers of counterfeit medicines in that country. The study is to be carried out to verify reports that in in 2005/2006, the market for counterfeits in Tanzania raked in the equivalent of US$100 million!

The TFDA has a 5 year strategic plan to fight both locally manufactured as well as imported counterfeit medicines. Some of the medicines that are widely counterfeited include ampicilin capsules(250mg) and chloroquine injections.

On the same subject, The Tanzanian Standard has reported that over 60% of imported goods are counterfeits. At a recent workshop held by the Tanzania confederation of Industry(TCI) to discuss ways of dealing with the scourge of counterfeits, participants were informed that 60% of medicines on the market are fake. They noted the tremendous efforts being made by public institutions such as the Drug Regulatory Authorities(DRAs), the Fair Competition Commission(FCC) and the Fair Competition Tribunal in impounding and destroying counterfeits.

However, challenges still facing these institutions include weak legislation and need for better inter institutional collaboration to enhance effectiveness as well as following the statutory mandate of respective agencies. Such agencies stand to benefit alot from financial and technical assistance if the recent strong resolutions of the G8 states on counterfeits are anything to go by. The usual issues are what mechanisms exist for accessing such technical support and whether in the long run, stringent border measures can sufficiently dampen the high demand for cheap /dangerous products.

The end result is that if the majority of the population in East African countries are used to cheap counterfeits, they will never buy genuine products at a higher price, much less those manufactured locally. This situation needs to be addressed as matter of urgency at the highest level possible by the East African Community(EAC) Secretariat.

Holographic tags for 2010 World Cup merchandise

According to an article in PrintWeek.com De La Rue (the world's biggest printer of paper money) is to implement high-tech security features on a range of holographic tags after being reselected as a 2010 FIFA World Cup partner. The tags will appear on clothing and merchandise for the tournament, which takes place in South Africa. The items will include easily authenticated holograms and SLSNet – an online ordering and tracking system. Shopkeepers and FIFA enforcement officials will be able to scan the tags to certify the garments' authenticity. The tags will also enable buyers to identify legitimate FIFA merchandise. FIFA, which has set up a network of globally branded stores in preparation for the 2010 tournament, claims there was not one case of counterfeit merchandise during the 2006 World Cup in Germany. Thierry Weil, FIFA's director of marketing, said: "Merchandising has become a big part of the football experience. The quality seals produced by De La Rue make it easy for any supporter to identify the original official items while guaranteeing the integrity of our licensing programme worldwide."

This blogger expects that De La Rue, FIFA and their lawyers will be put to task in South Africa in the run up to 2010. Let's hope that De La Rue achieves as much success at outwitting the opposition as did near namesake De La Rey.

Friday, 11 July 2008

Brand Protection Group's MOU for the UAE...and SADC consult

According to Albawaba.com the Ministry of Economy (UAE) has signed an historic MOU (memorandum of understanding) with BPG (Brand Protection Group) to protect intellectual property rights in the UAE. BPG Members are regionally headquartered in the UAE and carry out operations that span the GCC, Middle East and North Africa. BPG has launched media campaigns and cooperated closely with local governments to stop the spread of the counterfeit industry and protect the consumer's rights in society. The Ministry of Economy and the BPG will work in unison to raise public awareness about IPR through dedicated campaigns throughout the UAE. Mr. Omar Shteiwi, Chairman of the BPG and Regional Intellectual Property Advisor for Nestlé Middle East was at signing ceremony held at the MOE headquarters in Abu Dhabi this week which was also attended by a number of government dignitaries and representatives of the BPG’s Brand Owners and Service Providers. Laurent Venetz is also an active member of the Nestle Group with IP protection interests in Africa.

Meantime, further south a joint initiative by WIPO, USPTO and South Africa DTI held consultation workshop on the enforcement of IPRs in the Southern Africa Development Community (SADC) this week. The news comes courtesy of counterfeit specialist Quentin Boshoff. Afro-Leo welcomes feedback from the consultation from anyone who attended and wishes to share information for the benefit of readers.

Thursday, 10 July 2008

BAT health warning reprieve in Kenya

British American Tobacco (BAT), "the world's most international tobacco group" has received a six-month reprieve from a requirement to display large health warnings on its cigarette packages as the new regulations on the industry takes effect. The Daily Nation reports that Kenyan Public Health and Sanitation Minister Beth Mugo says the delay is due to failure by her Ministry to provide the company with the Kiswahili translation of the health warning, which it is supposed to print on cigarette packets. 'Due to the delay in providing you with the translation, you are expected to comply with the Tobacco Control Act 2007 Part VI (210) within six months,' Mugo said in a letter to BAT MD Nicholas Maistre.

Wednesday, 9 July 2008

Ivorians increasingly choose fake medicines on price

The differential between the relatively high price of genuine pharma products and counterfeits is driving many people to purchase the latter in Ivory Coast, despite the risks associated with this practice. According to one purchaser at Abidjan’s Adjame market:
"I can buy the same medicines at the market by the individual tablet not the packet, and pay just 150 CFA francs (US$0.35) per pill For 500 CFA francs (US$1.19) I can get enough medicine to last me three days".
Dr Ambroise Kouadio, a doctor in Abidjan, is quoted as saying that, even though the risks of using counterfeit medicines are fairly well understood, the number of people who are turning to them is increasing:
"The rate of use of health centres remains relatively low, while the consumption of street medicines is increasing".
A formal survey of conducted for the World Bank in 1998 concluded that 20 percent of Ivorians used counterfeit medicines. Health experts now estimate that the proportion might have risen to between 30 and 50 percent, or even higher. In late May the health ministry announced it was going to reduce the price of legitimate medicines, but the preferred long-term scheme is a state medical inurance system [source: IRIN News].

Tuesday, 8 July 2008

A cricketer's pose

The West Indies Players Association have been assigned the image and intellectual property rights for 75 of their members as set out in the formal agreement between the players and WIPA. It is an initiative that has been welcomed by WIPA and its members as the organisation seeks to exploit and maximize the full commercial potential for the use of the players' intellectual property and image rights. "WIPA has fought many long and tough battles in recent times including those to protect the intellectual property and imaging rights of players and we are quite pleased that the parameters are now much clearer in relation to such rights," said WIPA president and CEO, Dinanath Ramnarine. He said the deal with the 75 cricketers follow the emerging trend of similar arrangements between cricket players and their associations as in the case with the equivalent groups in South Africa and England.(source: CarribeanCricket.com).

The South African Cricketer's Association is active under the helm of Tony Irish. The Players benefits are set out in an Memorandum of Understanding that is located here.

There is often much debate about whether it should be the individual, the team or the league or the federations in charge of the sport as to ownership of image rights. Some people argue that the personalities have worked hard to create their fame and so should be able to control commercially the results of this hard work by owning the rights themselves. There is also a case that since the public created the personality's fame, that it should be the public as a whole that decide who owns the rights.

Whatever the position this development must come as relief to WICA who suffered the emabarrasment of a revolt over image rights, as reported in the Telegraph here in 2004.

Sound recordings: when more control can lead to more infringement

Mtandazo Dube and Godwin Muzari ("Recording albums in South Africa for local musicians is proving not only to be ill-advised but also ill-timed") have written a remarkably depressing account in the Zimbabwe Sunday Mail of the lot of African musicians to the south of the continent. After describing the black market for pirate products -- with pirate product available in Harare even before it has been lawfully marketed in South Africa -- they explain how attempts to control the circulation of recordings have the paradoxical effect of fuelling the demand for unauthorised copies.

Admiral scuppered in Southern Africa

International Brand Licensing has sold its Admiral sportswear trade marks in southern Africa to an investment company, Admiral IP Ltd, for £225,000. The sale was motivated by a move to free up cash by disposing of"largely unproductive assets". Said a spokesman for IBL, in a ringing vote of no-confidence in Africa: “
Whilst we will continue to maximise our licensing revenues from opening and building the more lucrative markets for our brands, we will also seek to exploit further opportunities to dispose of territories that are unlikely to enhance shareholder value in the future".
[source: SmallCapNews UK].

Monday, 7 July 2008

New renewable energy centre for Egypt -- but will it generate royalty income?

Egypt has established the Regional Centre of Excellence for Renewable Energy and Energy Efficiency, a US$30 million project for renewable energy for the Middle East and North Africa. Based in Nasser City, Cairo, the Centre was opened last month with funding from the European Investment Bank and the European Commission, the German Agency for Technical Cooperation and the Danish International Development Agency. The Egyptian Ministry of Electricity and Energy is also around 20% of the money.

Apart from performing research on renewable energy, including the testing of solar and wind power technologies, the Centre will provide consultancy services to governments and private companies, promoting knowledge and technology transfer between companies and governments in the region and the North. If the technologies it develops are viable, it will also hold training programmes to help set up technologies around the region.

The initial funding is intended to keep the Centre going for the first five years. Beyond that, it should be self-financing "through its consultancy and training services". From the fact that the self-funding is not predicted to come from royalty revenue from the licensing of any of its likely intellectual property rights, it may be speculated that any innovative products will be the subject of royalty-free licences [source: Environmental News Network]

Sunday, 6 July 2008

Focus Features offers grant for African filming

Focus Features has established a new programme, Africa First, which offers participating filmmakers the chance of a US$10,000 award to finance the production and/or post-production of a narrative short film -- so long as it is made in continental Africa and taps the resources of the African film industry. Anyone thinking of entering had better act fast -- entries have to be postmarked not later than 15 July and must arrive in the US by 31 July.

Among the conditions of entry for film makers seeking the award, the following are pertinent from the point of view of intellectual property:
"(3) I am not waiving, and this Submission Agreement will not limit, my copyright in the Project. I retain all rights to my Project pursuant to and in accordance with the Rules.

(5) I understand that because there is always the possibility that any material in the nature of story ideas or otherwise which I may submit to Sponsor may be substantially similar to ideas, formats, stories, suggestions or other material from other sources which Sponsor may have previously used or which Sponsor may hereafter wish to use and that I will not have any claim under such circumstances.

(6) I understand that Sponsor may use my name and title of the winning Project for advertising or marketing purposes of the Program.

(8) I agree that in no event shall I seek to enjoin, restrict or obtain any form of court order blocking or interfering with Sponsor's development, production, distribution, marketing, advertising or other exploitation of any motion picture...".
Further details and application form here [source: New Era, Namibia].

Friday, 4 July 2008

Ethiopia's new Media Law criticised

Reuters reports that critics are describing Ethiopia's new media law, the Mass Media and Freedom of Information Law, as a threat to free expression, despite the fact that it bans the censorship of private media and the detention of journalists. Members of the opposition object that the new law still allows state prosecutors to invoke national security as grounds for impounding publishing materials prior to publication and distribution.

At this stage it is unclear what the impact of the new law will be upon copyright-creating, copyright-owning and copyright carrying sectors.

Thursday, 3 July 2008

Nigeria's published TM applications: whatever happened to the specs?

Last month the Nigerian Trade Mark and Patent Registry published its first Trade Marks Journal of the year. Weighing in at 540 pages, it's the largest volume to be published in recent years. Presumably it would have been somewhat longer if it had included the specification of goods and services covered by the marks for which registration is sought -- an omission which may not be lawful.

By law, the registrar must advertise accepted trade mark applications in the Trade Marks Journal, following which there is a two-month period within which third-party oppositions must be filed. The deadline in relation to the current Journal is 6 August 2008, by which time any opponents would have had to conduct their own research in order to identify the applicants' specifications of goods and services [source: Sade Laniyan, Jackson Etti & Edu, Lagos, writing in World Trademark Report].

Wednesday, 2 July 2008

Kenya: Tribunal finds Pfizer’s Azithromycin dihydrate patent infringed

The Industrial Property Tribunal (Tribunal) handed down a ruling in Pfizer Inc v Cosmos Limited, Case No. 49 of 2006, finding Cosmos Limited to have infringed Pfizer’s ARIPO patent number AP44 relating to Azithromycin Dihydate. Accordingly it granted an injunction restraining the respondent from infringing the patent for the remaining term of its existence and ordered destruction of the remaining stock of infringing products. Afro IP notes that the ruling is dated 25th April 2008 and the patent expired on 15th June 2008.

Pfizer filed the infringement proceedings with the Tribunal under Section 106 of the Industrial Property Act (“the Act”) alleging that Cosmos was selling, without its authority Azithromycin dihydrate under the trade mark “Zithrox”. The patent is applicable in Kenya by virtue of Section 59 of the Act (which provides that a patent granted by ARIPO under the Harare Protocol has the same effect as a patent granted under the Act).

Validity

First, the Tribunal had to deal with the issue of the validity of the patent at the time the respondent allegedly committed the infringing activities. Notably, the argument on validity of the patent centred on procedural rather than substantive issues such as novelty and inventive step. First, the respondent contended that the patent had expired due to non-payment or late of renewal fees and relied on the case of Sanitam (E.A.) Ltd v Rentokil (K) Ltd [2006] eKLR in which the Court of Appeal held that there could be no infringement of a non-existing patent. However the Tribunal, and rightly so, distinguished the two cases, pointing out that Sanitam sought to enforce a patent application and not a patent.

The responded also argued that the patent in Kenya was not valid since the equivalent patent in United States of America (from which priority was claimed) had expired. In rejecting such a notion the Tribunal observed that “patents are territorial and the expiration of the patent in that country does not affect its validity in Kenya”.

On the issue of late payment of renewal fees, the Tribunal found itself in a situation reminiscent of the Board of Appeal ruling in Sanitam v ARIPO in which the Board blamed ARIPO for removing the Sanitam patent from the register without following the right procedure. It had to determine whether the patent had lapsed because the applicant had remitted some renewal fees after the 6 months grace period allowed under the Harare Protocol.

Noting that the Protocol places an obligation upon ARIPO to send notifications to patent holders reminding them to pay annual fees, there was no evidence before it that this was done and neither was evidence presented to show that the patent was removed from the register. The Tribunal had no option but to conclude that the “patent was at all material times maintained in the …register and was therefore in force”.

Infringement

Having found that the patent was valid, the next question was whether the responded had infringed on the patent. In support of its case, Pfizer produced laboratory tests confirming presence of the Azithromycin dihydrate in the respondent’s product bought in the market. The respondent admitted to have imported, manufactured and sold drugs containing the product in 2005 but stopped doing so after receiving a cease and desist letter from the applicant. However, the respondent denied infringing the patent citing a raft of issues (well... some bordering on comedy!).

It was argued that the provisions of the Act and the TRIPS agreement allowed the respondent to deal with the product without seeking consent from the patentee. The respondent also sought to demonstrate that the product was readily available in Kenya by producing other medicines containing the patented product having being imported from India, Bangladesh and China (presumably by other players not before the tribunal).

The argument on TRIPS agreement was rejected on the basis that its provisions notably the flexibilities and exceptions are contained in the Act. The Tribunal also pointed out the various provisions in the Act such as voluntary and compulsory licences, which the respondent could have pursued in order to exploit the patented invention.

The respondent also tried without success the parallel importation defence provision under section 58 (2) of the Act. However, the Tribunal was of the opinion that “the section does not give a blanket protection to third parties to exploit a patent except in the circumstances provided for by the Act”.

In mitigation, the responded argued that it had no intention of infringing the patent and it had stopped dealing with the product apart from fulfilling contractual obligation with the government. The Tribunal was of the view that “intention is not an ingredient in considering whether there has been infringement or not.”


Tuesday, 1 July 2008

Aspen's IP deal

Reported in today's Business Report is news that Africa's largest drug maker Aspen Pharmacare has purchased four GlaxoSmithKline (GSK) products, according to group chief executive Stephen Saad. Aspen's international subsidiary, Aspen Global, paid £170 million (R2.7 billion) for the intellectual property rights to Eltroxin, Imuran, Lanoxin and Zyloric for all major markets except the US and Japan. For the full report click here.

Anti counterfeits campaign gets louder in East Africa

The Tanzanian Standard Newspaper has added its voice to the outcry over counterfeit products in the region.

According to the paper, 2007 statistics show that over US$20 million is lost in tax revenue to counterfeiters each year within the East African Community (EAC). Brand owners typically lose over three times that value as taxes are on average between 25-40% of the value of goods.

This problem has compelled the East African Community to set up an inter-governmental forum to combat the problem of piracy in member states. The EAC has also hired consultants to develop a comprehensive anti piracy strategy. Proposals also include establishment of specialized anti-piracy units to fight counterfeits in the region.

This story comes on the back of many others reported on the sale of counterfeit Kiwi shoe polish, mainly in Uganda, BIC pens and Batteries last year. The editorial lays blame on globalization and liberalization as being responsible for the increase in counterfeits in Tanzania. This may well be true. Unfortunately globalization, and its cousin liberalization are here to stay. The problem is that with them came increased poverty even though per capita incomes have increased - somewhat! Poverty renders many consumers vulnerable to exploitation. Many of the counterfeit goods sell well during 'back to school' periods when parents are shopping for students returning to boarding school.

Whereas the governments in the region must do something really soon, brand owners need to be more vigilant in policing their marks. Many local manufacturers within the EAC with export volumes in millions of dollars do not have registered trademarks! Currently, there is insufficient awareness on the part of policy makers, bureaucrats and enforcement agencies in Tanzania, Kenya or even Uganda to ensure that the law is enforced.