Afro-IP news bulletin: Granted patents in South Africa, calls for IP review in Nigeria etc

Afro-IP news bulletin: Granted patents in South Africa, calls for IP review in Nigeria etc

By IPcommentator   Sunday, July 06, 2014   2 comments:

(1) Pluristem holds two patents in South Africa

First, via MarketWatch, Afro-IP understands that Pluristem Therapeutics Inc, a leading developer of placenta-based cell therapies, has received Patent No. 261087 from India's Office of the Controller General of Patents, Designs & Trade Marks for a patent titled, "Methods for Cell Expansion and Conditioned Media Produced Thereby for Therapy." 

The report states that the patent covers the company's key technology platform; its method for 3-dimensional expansion of placental and adipose (fat) derived cells, and the composition of cells derived using this method. 

The second patent, as reported by WSJ, covers methods for treating ulcerative colitis or Crohn's disease using placenta-derived cells. [Afro-IP is not sure if both patents are related] 

(2) Firma Holdings Corp and CollPlant also hold South African patents

Staying with South Africa is the news that Tara Minerals (now known as Firma Holdings Corp) have acquired a number of “…patents, trademarks and other intellectual property in the United States, Europe, Mexico, Canada, South Africa, Japan, and Chile regarding systems and methods for packaging of bulk quantities of fresh produce and flowers incorporating modified atmosphere packaging. The acquisition also includes pending applications throughout the world regarding the active treatment of modified atmosphere packaging.”

CollPlant's patent is said to cover the processing methods for human collagen from plants.

Well, we already know that South Africa currently flies the flag for the continent in the area of IP. Hopefully, this is a good sign for more foreign direct investment.

(3) A call for IP law review in Nigeria, among others

The Vanguard Nigeria recaps on last month’s conference on ICT development in Nigeria which featured stakeholders such as NOTAP, EFCC [this anti-graft agency is getting more involved in IP enforcement work than ever before] and ISPON. 

In summary, representatives of these organisations, particularly NOTAP, spoke about the need to: (a) review Nigeria’s colonial trade mark and patent laws; (b) revamp the IP offices; (c) foster knowledge transfer between industry and universities, and (d) reduce Nigeria’s dependency on foreign IP. Obviously, a conference like this one won’t be complete without addressing or emphasising the importance of IP protection and enforcement. [Afro-IP commends the work of NOTAP, under the leadership of Engr. Umar Buba Bindir] 

This Leo assumes that the relevant government ministries or agencies are also reaching out to experts like Professor Adewopo.

(4) Hotels warned on payment of royalties

Nigeria's collecting society, COSON, talks tough to get hotels to pay up, according to This Day Live. [Afro Leo can imagine how extremely difficult it is for COSON to identify business premises without appropriate music licences across the vast 36 States of Nigeria. Equally, he understands how business owners might be worried about potentially handing over hard-earned money to the wrong outfit] Lessons from other developing nations (also here, here and here) or even developed ones, will indeed help COSON deliver for copyright owners.

(5) The International Chamber of Commerce (ICC) publishes the 12th edition of the IP Roadmap

Last but not least, trust the ICC to have their finger on the pulse of global innovation and IP issues (previously noted by Afro-IP here). Its “popular” IP report, targeting policymakers and business leaders worldwide, is out! The accompanying press release states: “…Containing contributions from experts around the world, the report has this year been restructured to better reflect the way businesses consider intellectual property (IP) as an asset that can be used to create value for their companies, for consumers and for society as a whole. Each section explains the background and the current landscape as well as provides perspectives for the future.” 

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Green Energy/Electric Car Patents for the Taking, potentially

Green Energy/Electric Car Patents for the Taking, potentially

By Afro Ng'ombe   Tuesday, June 17, 2014   No comments:

Elon Musk, the CEO of electric car company Tesla announced via the company’s blog that the company will not enforce their patents against “anyone who, in good faith, wants to use our technology.”  As a continent that leap-frogs out of outmoded technology and with growing experiments in green energy, Africa could benefit from free-use of such patented technology.

If – that is – African entrepreneurs, inventors, and investors can rely on a blog post from the CEO as a grant of patent rights or at least an enforceable license or otherwise use the patented technology with impunity.

One question is if Tesla Motors’ patents are protected in any African countries.  Many countries on the continent are members of the WIPO Patent Cooperation Treaty, so theoretically it would not have been difficult for Tesla to apply for international patents.  But, would the company have found it worth the time and cost to apply for patents abroad, particularly in Africa?  Of course, even if they are not, any company wishing to export developed technology to America would need to be concerned about rights to use the patented technology.

A second question is would any courts in Africa uphold the blog post as a legally binding grant of patent rights should someone attempt to enforce the patents.  This is particularly important should Tesla be acquired by a less-benevolent owner sometime in the future.

A relevant side-question, how useful are the patent documents themselves to facilitating development of green technology on the continent?  There’s a lot of conversation in development & IP communities about the failure of technology transfer promises in international treaties that have resulted only in the sharing of patent documents without hands-on skill training.

It’ll be interesting to see if any companies, African, American or otherwise, take advantage of any Tesla Motors patents on the basis of the blog post, or if Tesla needs to make the grant of use a little more formal.

A catalog of patents issued to Tesla Motors is available here.

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No More Examination of Utility Models in Kenya

No More Examination of Utility Models in Kenya

By AfroTwiga   Friday, May 23, 2014   2 comments:

Patenting in Kenya just got a bit more South African.

The April edition of the Kenya Industrial Property Institute (KIPI) journal, available here, announces that KIPI will no longer do any substantive examination of Utility Model Certificate (UMC) applications. In KIPI’s words:

Examining a UMC
"The Night Before the Examination"
Pasternak, Leonid

Following a review of the practice in the Institute with regard to the processing of utility model applications, the Institute has decided to discontinue the carrying out of substantive examinations in relation to utility model applications with effect from 1 May 2014 in order to align the practice with the Industrial Property Act, 2001. However, such applications shall continue to be subject to examination for compliance with all the other requirements of the Act and Regulations.

By “all the other requirements” is meant checking the formalities of the application as well as checking for non-patentable subject matter (e.g., discoveries, scientific theories, business methods, plant varieties, etc.). Thus, an application for a UMC will be reviewed for such compliance and then will automatically be published and granted. 

This Leo has two problems with the announcement:

1. Automatically granting UMCs makes patenting in Kenya, essentially, a registration system rather than an examination system. Regular AfroIP readers will know that South Africa is currently in a high-stakes effort to do the reverse conversion – i.e., from a registration system to an examination system. The benefits (to humanity, at least) of examination have been thoroughly discussed on this blog and others (see, e.g., here), particularly with respect to the pharmaceutical industry.

2. The announcement is not, on the face of it, consistent with the law. Although UMCs lack a requirement for inventive step, they do come with a requirement for novelty. How can KIPI assure the public that granted UMCs describe novel inventions if there has been no substantive examination? The answer is that it cannot, so we are essentially guaranteed that invalid UMCs will be granted.

This Leo and his colleagues will soon be undertaking to prepare a more thorough legal argument supporting or not supporting KIPI’s decision. In the meantime, comments from readers would be most welcome. Is this a popular move by KIPI?

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WIPO Re:Search making progress in the fight against Neglected Tropical Diseases (NTDs)

WIPO Re:Search making progress in the fight against Neglected Tropical Diseases (NTDs)

By IPcommentator   Friday, May 16, 2014   No comments:

Introduction

The Centers for Disease Control and Prevention defines NTDs as: "...a group of parasitic and bacterial diseases that cause substantial illness for more than one billion people globally". WHO prioritises 17 NTDs which, it believes, are endemic in 149 countries; it currently has roadmap targets, for 2015 and 2020, towards tackling them. 

Remember the London Declaration on NTDs?; here is a report on the promises. As always, there is more to be done. Mark Kessel argues that the goals (or hope to see the omission of the word "neglected") would not be achieved unless there is an equal focus to fund diagnostics for NTDs. 

WIPO's effort

Apart from the news that Mr. Francis Gurry has been successfully re-elected, WIPO tells us that its impressive initiative, Re:Search, has reached a remarkable level - since its launch in 2011.Their press release tells us a bit about this initiative:

Source: here. 
Afro Leo also likes to teach
little Leos how to hunt

"...WIPO Re:Search matches owners of intellectual property and other resources – such as pharmaceutical compounds, data and discovery techniques – with qualified researchers working on new treatments for NTDs. Under the agreements, these resources are provided for free. So far, more than 50 such collaborations have been agreed, underscoring WIPO Re:Search’s growing influence in the public-health sphere." 

This Leo understands that this project has now secured its 60th partner - apparently, Chevron is also involved in the discussions - and it seems African countries feature heavily in this initiative. Lastly, he notes that IP Australia is totting-up its Afro Leo IP technical assistance points by supporting WIPO Re:Search.

Says Afro Leo, "great news! By the way, Chevron is not new to this sort of CSR (also see here). To WIPO, well done. Rather than wait for Big Pharma to spend many millions of dollars on NTDs, currently with little or no commercial value, invite African-based pharmaceutical experts (it is assumed) to learn from Big Pharma on how to do it -with the necessary support- by and for themselves - with little or no strings attached, hopefully. It is hoped that African Governments are fully behind this, one way or another, and that these scientists or researchers will eventually come up with affordable and effective solutions to NTDs".

Well, knowledge exchange goes both ways.

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Learn more about Re:Search here or WHO's Africa Region, here
WIPO Re:Search reported by the IPKat in 2011 here
Why not also see how not-for-profit drug development is gaining momentum, here, or how NTDs can be tackled here.
To learn how to integrate CSR into your business model, click here, here or here.

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Access to medicine and patents: One African country decides to take 'real' action

Access to medicine and patents: One African country decides to take 'real' action

By IPcommentator   Wednesday, January 22, 2014   No comments:

This Leo finds the public tussle between the South African (SA) Government and pharmaceutical giants fascinating. Fascinating because it appears as if the SA Government really cares about its people - rather than divert attention as seen in other African countries. 

Afro-IP has been following the mooted SA's IP reforms for a while (e.g. here) and to add to yesterday's post, readers may wish to watch this CNBC Africa interview with South Africa's Health Minister, Aaron Motsoaledi, who valiantly responded with recognised points in the access to medicine and patents discourse. Others may label it 'trash talk'; but this Leo was particularly impressed when Mr Motosoaledi said this: "We're not doing something that is illegal; that is not done internationally. We're doing something that we have never done; we did not do for a long time and it disadvantaged us and we want to correct it." (Just in case this Leo have not transcribed correctly, you can listen from 9:00 to 9:50.)

Well, South Africa have actually done a thing or two with compulsory licensing (as well as using other mechanisms) to bring about affordable medicines. Perhaps, the current legal framework is too rigid for it to achieve the desired public health goal, hence the call for reform.

India seems to have given hope to other developing countries (and its BRICS fellow, South Africa) in the compulsory licensing game. Only time will tell as to its health and economic impact.

Is this a wise move and should other African countries follow suit?

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• For Compulsory Licenses for pharmaceuticals: An inconvenient truth?, see here
• What limitations does TRIPS put on compulsory licensing?, see here
• For WTO's frequently asked questions (FAQs) on compulsory licensing of pharmaceuticals, see here
• TRIPS and public health (Doha Declaration), see here, here and here
• Patents, Parallel Importation and Compulsory Licensing of HIV/AIDS Drugs: The Experience of Kenya, see here
• The South Africa AIDS Controversy: A Case Study in Patent Law and Policy, see here

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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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Approaching a software patent cliff?

Approaching a software patent cliff?

By AfroTwiga   Thursday, October 03, 2013   No comments:

“Is software patentable in Kenya?” This was a question posed at a conference held in Nairobi last year. In this Leo’s opinion, the answer is “yes”, primarily because of a change in the Kenyan patent law in 2001. The old law explicitely excluded software from patentable subject matter, but the revised law conspicuously omitted the exclusion (conspicuous because other exclusions were maintained). If it was once prohibited, but is no longer, then it must be allowed, right?

driving buffalo over the cliff

charles marion russell 

“Should software be patentable in Kenya?” The same conference also posed this question, which is decidedly more difficult to answer. This post focuses on one aspect of the question, namely, whether the current system is likely to replicate the mess that patents have made in the software industry in the United States.

Software patents in the US are hard to define, are numerous in number, and are the subject of endless debates about patentable subject matter. The US courts have completely changed their treatment of such patents at least three times, making it difficult to know at any given time whether a patent is valid or invalid. More problematic is the contention that, during the ‘90s and 2000s the USPTO issued a large number of broad patents that cover many of the most basic online or mobile operations. Furthermore, such patents are frequently categorized as “weak” patents – i.e., patents that barely pass (or probably do not pass) a requirement for patentability such as non-obviousness. Nevertheless, or as a result, such patents are often used by Non-Practicing Entities (i.e., “patent trolls”) to sue large numbers of defendants, confident in the belief that most defendants will prefer to settle out of court for just less than it will cost to litigate.

Is Kenya heading in this direct? The potential is serious for two reasons. The first reason is the importance of the software industry to Kenya. The phenomenal growth of the industry in the last 5 years is unmatched in any other sector, and ICT offers substantial opportunities for high-paying jobs and entrepreneurship.

The second reason is the existence in Kenyan IP law of Utility Model Certificates. “Normal” patents are granted for inventions that are novel, useful, and, critically, non-obvious (or, if you are in Europe, involve an inventive step). Thus any patent system can theoretically weed out “weak” patents before they even become patents simply by rigorously enforcing the rules for granting patents. Weak patents tend to be for obvious inventions, so enforcing the non-obviousness criteria should limit their number.

Utility Model Certificates, on the other hand, are granted for inventions that are merely novel (and useful) – there is no requirement for non-obviousness. Almost by default, then, they are granted for obvious inventions; if the invention is non-obvious the applicant is more likely to file for a regular patent. A Utility Model certificate provides exclusionary rights for “only” 10 years. In the software industry, 10 years is still much longer than the useful lifespan of most inventions.

So, by design of the law, Kenya is destined to have a collection of intellectual property rights granted to novel but obvious inventions, including inventions in software. These are key elements in building a system ripe for exploitation by Non-Practicing Entities.

To date, the number of software-based utility model (or patent) applications filed in Kenya is very low. Nevertheless it took decades for the US to reach its current position, so a bit of crystal ball gazing may be valuable.

Incidentally, the IPKat recently posted on whether Patent Trolls are universal, and observed that they seem to be largely a US phenomenon. This Leo has a similar experience – virtually every time I ask a Kenyan audience whether they have heard of Trolls or NPEs, not more than one or two hands are raised. Let us hope it stays that way!

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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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