RSA's draft National IP Policy - Gilfillan's and SACCI's notes

RSA's draft National IP Policy - Gilfillan's and SACCI's notes

By Darren Olivier   Tuesday, October 22, 2013   No comments:

Graeme Gilfillan of NISA has filed his response to the draft national IP Policy which can be located here. Nisa is an organisation devoted to the local entertainment industry and Graeme's comments are based on his wealth of experience negotiating royalty and distribution agreements for local talent based, primarily on copyrights and performing rights. He is also a forensic investigator in this field.

"There is a dire and overdue need for an IP policy for South Africa, as there is for a co-ordinated 
approach. However to be effective South Africa needs to drop the ‘one size fits all’ approach to IP. The requirements and challenges for copyright are not the requirements for patents, trademarks and 
designs. Whilst a lenient approach to limitations and exceptions with generic medicines may be 
appropriate as policy, the same applied to copyright has disastrous outcomes."

Meanwhile, in a press release yesterday, the focus of The South African Chamber of Commerce and Industry (SACCI) is quite different. Graeme's concern is primarily local creatives whereas SACCI's focus in on the effect of the draft policy as an incentive for foreign investment.

"SACCI welcomes the policy document in principle, as it is necessary to have a discussion on the long-term plans for IP. However, it is also necessary to keep in mind the highly sensitive nature of IP and its potential effect on investor confidence and innovation across business sectors. The single most important consideration in IP law is the impact any amendments might have on investor confidence. This is because IP is by its very nature forward-looking and needs to continue to consider future scenarios. So whereas it may seem tempting to impose restrictions on IP rights due to "public interest" considerations, any such intrusion is likely to significantly damage the origination of future IP in South Africa. In turn, this will mean that South Africa loses out on investments, job creation, technologies and business opportunities associated with the life cycle of IP creation. The ultimate end-point of such a situation is that South Africa will not only lose essential opportunities, but also be cut off from end-user technological opportunities."

The two, at times, contrasting standpoints illustrate just how difficult a co-ordinated policy is to achieve. At the very least DTI should be congratulated on attempting to do so. It has galvanised thought on the topic as these comments and other listed below explain.

Additional commentary:

Academics' joint submission 

Harms’ notes

Trade Mark notes

Patent notes

Copyright notes

Moubray's notes

Stellenbosch University's submission

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RSA's Draft National IP Policy - Stellenbosch Uni notes

RSA's Draft National IP Policy - Stellenbosch Uni notes

By Darren Olivier   Monday, October 14, 2013   No comments:

Stellenbosch University has produced a 72 page document commenting on the draft policy. The commentary consists of:

1.   An overview of the DNPIP, as a whole, prepared by Professor OH Dean, Chair of IP Law.

2.   A commentary on those aspects of the DNPIP dealing primarily with copyright, trade marks and related issues prepared by Professor OH Dean.

3.   A commentary on primarily patents, design and technology transfer matters prepared by Dr M Kleyn, a Fellow of the CIP.

4.   A commentary dealing primarily with matters pertaining to the internet prepared by Mr C Jooste, a Fellow of the CIP.

5.   A commentary dealing primarily with computer programmes prepared by Dr S Karjiker, a Fellow of the CIP.

It is well constructed, comprehensive and damming, and well worth a read even if just to understand where South Africa stands in terms of its international obligations. Without wanting to single out any one of the authors, the conclusion of Dr Kleyn is a consistent message throughout the read:

"The concept of a national IPP has merit. Although there are many aspects raised that are encouraging and can be supported, the presentation, form and content of the IPP are of poor quality, contains substantial material errors of fact and law, provides no substance and is without any empirical data or proper studies. The IPP should be referred for redrafting and it is strongly recommended that proper public consultation with the relevant IP role players and experts is done."

For a collection of commentary, please check these out:

Harms’ notes
Trade Mark notes
Patent notes
Copyright notes
UCT’s notes
Moubray's notes

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RSA's Draft National IP Policy - Moubray's notes

RSA's Draft National IP Policy - Moubray's notes

By Darren Olivier   Friday, October 11, 2013   No comments:

With only 6 days to go before the deadline to comment on RSA's draft national IP Policy, Hugh Moubray of Spoor & Fisher has shared his thoughts on the interface between innovation and patents in South Africa. His article The Importance of innovation and the patent system in South Africa can be located here. What Afro Leo likes about Hugh's article is that it is not simply a critique of the draft policy, it proposes a solution and, in doing so, articulates a basis and reasoning for his approach.

He addresses and provides cogent arguments for the patent system as a means of "leveraging the power of self interest [which] leads to innovation, growth and prosperity", why RSA's current system is more than just a deposit system, the virtues of the system as it works in RSA, why it does not produce "weak" patents and why so-called "evergreening", in principle, is not necessarily bad though he explains how the effect of unwarranted "evergreening" could be limited so that they are not a barrier to generics, and why "evergreening" would not be eliminated, even with an advanced merit based examination system. In doing so, he explains how our current law caters for public concerns in requests for interim relief.

Hugh Moubray

He believes that if the patent system is to be improved, the "focus should be on improving the patent litigation system" and to that end he supports a specialist patent court which he feels is supported by the existing Patents Act. He also feels that the "most encouraging" aspect of the draft IP Policy is on the topic of IP enforcement.

".....there are therefore three factors which, in my view, contribute to

South Africa having a prosecution system which has the best of a deposit based

Examination system and a merit based examination system. As mentioned these

three factors are the legal requirement that a patentee is not entitled to any

relief on an invalid or partially invalid patent, the practice of amending patents,

and the examination of international patent applications"

".....I believe that a merit based patent examination system would be

very costly and would be likely to lead to significant delays in the grant of

patents. In addition resources would be wasted examining patent applications

which have no commercial value. On the other hand, a properly functioning

specialist patent court would provide a very focused and effective approach to

the issue of patent validity."

For previous notes on the draft IP Policy see:

·         Harms’ notes

·         Patent notes

·         Copyright notes

·         UCT’s notes

·         Trade Mark notes

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RSA's Draft IP Policy - Trade Mark Notes

RSA's Draft IP Policy - Trade Mark Notes

By Darren Olivier   Tuesday, October 01, 2013   No comments:

If the recent Microsoft/Nokia deal provided a backdrop to make a few notes on the copyright aspects of RSA's draft national IP Policy then yesterday's industry level analysis report by the EPO and OHIM on the contribution of IPR intensive industries to the European economy is as good as any to consider the draft IP Policy on trade marks.

This is because, in the European report, trade marks (as a single form of IPR) outperformed patents, designs, copyright and geographical indicators in its contribution to both jobs and output in the EU and is relevant to RSA.

The European report is also a strong reminder of the potential strength of IPRs to an economy. As gentle nudge to our DTI, according to the study, IPR intensive industries account for 26% of employment and 39% of GDP in the EU. Trade marks weigh in with a whopping 20.8% of employment and 34% of GDP contribution.

Moreover, the study is relevant to RSA's policy makers, especially for trade marks:

• trade marks is a form of IP that has taken traction in RSA (over 30000 filed per year, a significant enough proportion of which are filed and enforced by locals).
• the rise of the middle income economy in Africa means that consumer industries, that are trade mark dependent, are becoming more important. 
• the European report indicates that trade marks pervade 277 of the 321 industries that were analysed (see page 56). 
• there is a link between trade marks and innovation, empowerment and job creation. This is explained in this links in this post here and in the report - see page 21.

So what does the IP Policy contain?

The good:

• It recognises that trade marks facilitate licensing and franchising and therefore investment. 
• It recognises the potential for trade marks to create wealth in rural areas and to stimulate SMEs.
• It recognises the need to facilitate registration of trade marks nationally and internationally ("where RSA has a footprint"? - see note below under "unclear") 
• It encourages trade marks as a means of protecting "sporting events". This may be controversial given the abuses that occurred during the World Cup 2010 although the recommendations on page 42 seem to attempt to strike a balance between the level of investment in the tournament eg (>20000 spectators) and local empowerment. 
• It states that the Trade Marks Act and Heraldry Act could work better together, suggesting an amendment insofar as state emblems are protected.
• It suggests that the rules for trade mark enforcement (oppositions, cancellations etc) are too legalistic and highly technical. I agree that they can be simplified - see here and here, for example. See also Harms's notes here - page 12.
• It suggests that capacity needs to be built at CIPC (this is urgent - see also comment below, under "bad").

The unclear:

• It seems to say that we should consider joining Madrid and perhaps also ARIPO but the comments on page 17 are unclear or nonsensical. 
• The link between traditional knowledge and trade marks seems to indicate that the trade mark system needs to cater for benefit sharing arrangements, consent, joint ownership and knowledge disclosure? It already does, in many respects and the principle (prior rights should be recognised) seems correct but does it mean more? Is this comment not supporting GI protection, rather? The wording is not typical trade mark speak and so it is confusing.
• It is not clear whether "investment" in a sporting event will be a ground for overcoming a non use attack on a trade mark - see page 42 "renewal and investment or use".

The bad:

• It indicates that the CIPC opposition body/Tribunal "is effective". This is quite simply wrong - see our analysis here - the backlog that has developed, due to lack of qualified resource and support for the Registrar, is so severe that it has forced CIPC to refer all oppositions to the High Court and would take until 2019 to clear at the current rate of decision making. The backlog is a major problem for trade marks in RSA.
• The "Copyright Tribunal also functions as the Trade Mark Tribunal..."? (page 46). The word "Tribunal" does not feature throughout the entire Trade Marks Act and is not related to the Copyright Tribunal.

Afro Leo would have like to have seen more in the draft IP Policy on trade marks especially in making the system quicker, easier to use, easier to search and more available. He is aware that the current Registrar is working hard on these elements but she needs more support. The Policy also does not tackle to problem that a significant number of trade mark decisions in the High Court are overturned on appeal. Does this mean that judges need to be better trained in this area of law? Do we need a specialist court? However, the draft Policy recognises that a capacity building exercise is required at CIPC and this is very encouraging.

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Evidence based copyright reform needed in South Africa

Evidence based copyright reform needed in South Africa

By Caroline B Ncube   Friday, September 27, 2013   1 comment:

[Reposted, with some revisions, from info-justice, Link (CC-BY)]  The Law and Economics of Copyright Users Rights conference  which this Leo participated in, probed the value of economic empirical  evidence to copyright reform discussions.   This post gives an account of the use of such evidence in current reform discourse in South Africa.  As Afro-IP readers know, the Department of Trade and Industry (DTI) has taken some initial steps towards a comprehensive IP reform process by  publishing a draft national IP policy, which is currently open for public comment.  The copyright sections of the draft policy do not engage with user rights in a detailed manner. Some mention is made of the need to have meaningful exceptions and limitations (E & L) ( at p16)  and the need to ensure that  these are not abrogated online through the use of technological protection mechanisms protected by anti-circumvention provisions (at p29). Currently the Copyright Act falls far short of reasonable expectations – it does not provide for E & L for the visually-impaired and does not cater adequately for online and distance learning (see the findings of the African Copyright and A2K project). One would therefore expect the draft policy, as the first step towards copyright reform, to raise these issues and to do so in a robust manner informed by empirical and other evidence. Disappointingly, the policy only cites the following two sources at p 29:

1. Pouris ‘Copyright TRIPS Exceptions in South Africa, Access to Education, Learning Materials’ (2009)
2. WIPO Studies

The WIPO Studies are not fully cited so it is not possible to follow these up. The report authored by Pouris is not publicly available and I have been unable to locate a copy of it.  It is important to make evidence on which policy recommendations are made publicly available in order to enable those who wish to engage in policy discussions to interrogate the evidence.

In searching for 2009 Pouris report, I came across another report by the same author entitled ‘The Economic Contribution of Copyright-based Industries in South Africa’ (2011) which used WIPO methodology and found that copyright-based industries contributed 4.11% to the South African economy in 2008.  It states the following recommendation in relation to users’ rights reforms at p 53:

‘The South African copyright regime does not include exceptions and limitations for the visually impaired or for the benefit of people with any other disability (e.g. dyslexics) as well as for technological protection measures (such as encryption of the protected material) and electronic rights management information (such as digital identifiers). Furthermore, despite the existence of exceptions for purposes of illustration, for teaching and research, the legal uncertainty surrounding the use of works has led to the conclusion of agreements between the collecting societies and educational establishments to the financial detriment of the latter. As exceptions have the potentials to create value (Gowers Review, 2006)53 we suggest that DTI should review the Copyright Act in order to introduce limitations in accordance with the Berne Convention three steps test (article 9(2)) and with the fair use provision and to clarify clauses as necessary’.

Surprisingly, this report , which was commissioned by the DTI with technical and financial assistance from WIPO, is not referred to in the draft IP Policy. However, as noted by Joost Poort in his presentation, studies on the economic contribution of copyright industries (and their counterpart – studies on the economic contribution of industries that depend on E & L) are not particularly useful as it is difficult to extrapolate policy directions from them. What would be more useful are ex-ante and ex-post evaluations of the experience of countries that have effected policy changes.  According to Poort, such studies could have been carried out in relation to Korea and Israel.

Other relevant research which ought to have been cited is  the chapter on South Africa written by  Natasha Primo and Libby Lloyd  in ‘Media Piracy in Emerging Markets’ (2011) (available here). Beyond this study, and those referred to in the ACA2K book, there does not appear to have been any other demand-side studies on South African copyright.  A study of  entitled ‘The Economics of IP in South Africa‘  was published by WIPO in 2009.  However, this study does not address copyright. It is essential to carry out economic research to provide empirical evidence to inform policy and copyright reform discussions. As stated by the speakers on the ‘copyright flexibilities and social and economic development: current state of knowledge’ panel at the conference, such studies should  be cost- benefit analyses of  flexible copyright in both the short and long term from creator and user perspectives. It will also be very important to bring relevant existing research (mentioned above) to the attention of policy makers in comments submitted to the DTI on the draft IP policy.

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South Africa's Draft IP Policy - Harms' notes

South Africa's Draft IP Policy - Harms' notes

By Darren Olivier   Friday, September 20, 2013   No comments:

Yesterday Afro Leo was pleased to receive former Supreme Court of Appeal Judge Harms' 19 page commentary on the draft IP policy lodged recently at the Department of Trade and Industry (see other policy notes published on Afro-IP here and here).

As one might expect it is an enlightening read. Harms' imagination leaves little to the imagination:

Candy/Fairy Floss or Cotton Candy

"... one cannot escape the conclusion that as policy it promises candy-floss: it is very sweet but it becomes sticky if you touch it and it disintegrates on eating, leaving no aftertaste."

It makes for good bedtime reading but it is not a bedtime story. Some of the problems are dire. Citing the disparity in the relative rates of growth of patent applications and per capita income across several developing countries (including China, Korea, Australia, Ghana, RSA and Kenya) he notes that:

"... a fair conclusion to be drawn from these figures is that there has been no growth in innovation in the RSA or, for that matter, in Africa [over several decades]."

That said, he is not critical for the sake of it:

"To prevent any misunderstanding about my approach to IPL I wish to state at the outset that I have always maintained that IPL tends to be greedy and that some aspects or manifestations do not necessarily serve the interests of a developing country. There is not a single model that fits all."

Sections A, B, C and D of the commentary all help to provide further context and perspective.

But he is critical.

"In short, the policy document fails in the same respect about which it complains. It did not co-ordinate with other departments or with the DTI or the Commission."

"While on the topic of neglected subjects there is the issue concerning the visually impaired and other people with disabilities....Government has often been approached to do something by creating a fair use exception for them. In spite of government’s general concern for the wellbeing of the disabled this request has not been processed."  (Andrew Rens makes a similar comment. See also Afro-IP background here.)

"Embarrassingly, the policy document shows some lack of appreciation of South African IP law."

"What can one say: an official document on IP that does not recognise the difference between the Berne and Paris Conventions?"

"Neither “health” nor the police have anything to do with patent enforcement."

"The document suggests the RSA does not have the capacity to manufacture drugs (p 23)."

"It would also have been useful to have statistics about applications under sec 56 of the Patents Act for compulsory licences for drugs and, if there are not any, an attempt to find a reason should have been made."

"The problem, which is universal and not appreciated in the document, is that generics are sometimes sold under counterfeit trade marks."

"The information is out-of-date."

Hi criticism is not beyond reproach - some would say, for example, that copyright does foster innovation (see his comments to the contrary in para 78).

Louis Harms currently sits as the Professor: Adams & Adams Chair of Intellectual Property, University of Pretoria. However, this commentary is in his personal capacity and his stated interest is purely academic. It would be a shame if it is not taken seriously by the DTI. As Appeal Court Judge Nugent (who penned the landmark BMW v Grandmark IP judgment earlier this week) expressed:

"Louis is internationally renowned in his field.....Lamentable is the conspicuous absence of his own country from that list [of international bodies that have sought his expertise to help formulate policy].

Let's hope his notes foster further constructive debate in RSA.

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South Africa's Draft IP policy - patent notes

South Africa's Draft IP policy - patent notes

By Caroline B Ncube   Friday, September 13, 2013   No comments:

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

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South Africa's Draft National IP policy - copyright notes

South Africa's Draft National IP policy - copyright notes

By Darren Olivier   Monday, September 09, 2013   No comments:

South Africa's draft IP Policy was published last week for comment within 30 days. 

What is the IP Policy?

It seeks to provide a national approach to all issues around intellectual property. In other words it would be the policy that guides future changes to, for example, legislation. It is important because it records the relative priorities of the country with respect to IP matters, and makes recommendations. 

Copyright and Software

Today, this Afro Leo considers the draft policy as it affects copyright and, in particular, the software industry. This is useful against the other big news last week - Microsoft's (MS) purchase of Nokia - a deal which is all about the perceived benefits of a jointly controlled IP portfolio (see IP Finance synopsis here). Put differently, the deal is an example of IP at work in the developed world by developed companies that create jobs, educate, innovate and whose technologies provide solutions. 

In a RSA context, solutions created by the software and device industry include facilitating access to information eg online University courses as well as services that assist in providing access and education around genuine life saving drugs eg mapping technology. These “access” examples are stated problem areas for RSA (ie restricted access to information and drugs, often blamed on IP).

In addition, both companies (Nokia and MS) have offices in RSA too - see here and here). In other words, if Nokia and MS are examples of what IP can do, then embracing an IP policy that facilitates their investment in a country like RSA or creating an environment for a similar home grown company, is not a bad aspirational benchmark for an IP policy, one would think. If so, how does the draft policy document fare?

The following sections are particularly relevant:

·         Objectives (page 4)

·         Types of IP (Copyright, US Digital Millenium Copyright Act and Fair Dealing/Fair  Use) (pages 14, 16)

·         Chapter 6: Copyright, Software and Internet (page 29)

·         Chapter 15: Enforcement of IP (page 42)

Notes

·         The objectives do not appear to be controversial. It seeks to bring RSA in line with the rest of the world but emphasises that we need to be aware of RSA’s own developing needs which include “access to knowledge” and “local empowerment, especially black empowerment”. The very fact that RSA is considering a co-ordinated IP Policy is, of course, very positive.

·         In general the document appears to promote "development", sometimes at the expense of "enforcement"; the relationship between strong enforcement as an innovation and investment incentive does not seem to be fully recognised (albeit that there is a stated intention to “foster the enforcement of IP” – page 42). How does a country attract investment from the likes of Microsoft, Nokia and others, if there are not laws that protect them? The policy is not altogether clear on how it will achieve this balance.

·         There is no specific mention of innovation, job or wealth creation through the software industry. This does not mean, of course, that it is not recognised. However, there appears to be view that enforcement and stronger protection for copyright would, inherently, be damaging because it reduces access to knowledge.

·         There is a recognition that, digitally, South Africa's Copyright Act is outdated and that there is no inspectorate to deal with “cyber counterfeiters” and so, there should be ratification of “digital treaties”. It is not entirely clear what this means but the sentiment seems correct.

·         There is a view that fair use/fair dealing exceptions do not cover RSA needs. These are likely then to expand, possibly to the detriment of copyright holders. For specific cases this might be required but it is difficult to tell what those will be from the draft.

·         There is a strong emphasis by the government, on using open source software (as opposed to proprietary software) for projects. It is recommended that “copyright legislation be amended in relation to the procurement of computer programs, with a view to ensuring that options for using low-cost and or open source software products are considered...”. This seems rather simplistic - if it is a case that software owners are charging too much then it can be addressed in other ways - see here, for example.

·         There is the possibility of a legislative change to allow “reverse engineering of computer software programs” consistent with its international treaty obligations. The meaning of this is unclear and ought to be considered carefully, especially if the policy appears to seek to exclude protection for software per se (see page 30) which would likely be a disincentive to the software creators. 

·         There is a recommendation to extend the fair use provisions to include “making and distributing copies from electronic sources (which presumably could include source code)” for education and research, commentary and review. Afro Leo notes that this is already an exception in the Act (see Section 19(b)).

·         There is a hesitancy to accede to the WIPO Copyright Treaty, DMCA and EU Database Directive. “The DCMA and EU Directive restrict the number of [free] downloads, whether for commercial or personal/research use.” Again, the Policy is not clear but will no doubt create concern from proponents of strong IP policies.

·         Common strategies are suggested at regional level (SADC and AU) for enforcement. This hints toward a regional customs authority which seems positive.

Conclusion

      In general, the draft IP Policy is noble in its objectives and its form, but contains some vague and worrying statements and recommendations for the software industry.  

      

      Readers (even co-bloggers) may well have strong divergent views and are encouraged to express them. 

      *Many thanks to Marius Haman for alerting this Afro Leo to the deal with Nokia and providing published deal information, and to Susan Olivier (Adams & Adams) for providing Afro Leo with the draft Policy.

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