Friday 13 September 2013

Caroline B Ncube

South Africa's Draft IP policy - patent notes

A number of commentaries have been published on the Draft IP Policy's suggested patent reforms (see below for links to some of these). In general, the draft policy has been lauded as a welcome step for South Africa. For example, the TAC and MSF have welcomed the policy as they are of the view that, if implemented, these reforms will curb harmful practices such as the evergreening of pharmaceutical patents. However, there seems to be general consensus that the wording of the policy could be improved in future iterations so as to achieve coherence, clarity and certainty.

The draft IP Policy makes the following recommendations in relation to institutional reform:

  • use a combination of the depository and substantive examination systems
  • introduce pre-grant and post-grant opposition procedures
  • introduce utility or second tier patents

The idea is to retain the depository system for some fields of technology and to introduce substantive examination for others. The question is; how this distinction will be made? The introduction of substantive examination of patents will pose capacity and resource problems but these can be overcome by careful planning and some imaginative thinking. For example, in the short to medium-term, South Africa may consider collaboration with a similarly placed country for the training of patent examiners, and perhaps to outsource examination. It would also be prudent to use a peer or expert review system that allows suitable persons outside the patent office to assist with the examination of patents (see details of the Peer to Patent Project in the US, UK and Australia).

The re-introduction of a pre-grant opposition procedure (which existed under the 1916 and 1952 Patent Acts) would also provide a valuable opportunity for interested persons to challenge patents before they are granted. As noted in another post, Botswana recently introduced opposition proceedings. A post-grant opposition procedure will also enable the review of existing patents in a manner that is easier, and hopefully cheaper, that an application to revoke a patent.

After proposing the introduction of a second-tier patent system, the draft IP policy notes that such a system is already in place in Kenya  (see Kenya's examination guidelines). In deciding whether this is an appropriate route for South Africa to follow, it is necessary to ask if the system has proven successful in other jurisdictions and to then consider South Africa's unique circumstances that may affect the implementation and success of the system.

An opportunity to contribute to comments on the draft policy
The IP Unit at the University of Cape Town, to which this Leo is affiliated to, has created a google document here which is editable by anyone who wishes to contribute to comments being prepared by the unit for submission to the DTI. Afro-IP readers are encouraged to add any comments to this document.

Some commentaries
Battle on the horizon over IP policy draft, Mail & Guardian, 11 Sept
New policy gives generic medicines the upper hand, Mail & Guardian, 10 Sept
DTI's draft IP policy lays foundation to prevent abusive patenting, Fix the patent laws (TAC), 10 Sept
New Draft South African IP Policy Receives Initial Positive Reactions, IP Watch, 9 Sept
South African Draft Intellectual Property Policy: Initial Reactions, Andrew Rens, 9 Sept

Caroline B Ncube

Caroline B Ncube

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