The South African Cabinet approved the South African IP Policy on 30 May 2018. A copy of the policy may be downloaded here.
According to the IP Policy, South Africa needs to transition towards a knowledge economy, and away from an over-reliance on natural resources. The IP Policy acknowledges that the South African Constitution already protects certain Intellectual Property Rights, and states that there is a need for a comprehensive IP Policy that will promote a holistic, balanced and coordinated approach to IP that is mindful of the many obligations under the South African Constitution.
The goals of the IP Policy are:
- To consider the development dynamics of South Africa and improve how IP supports small institutions and vulnerable individuals in society, including in the domain of public health
- To nurture and promote a culture of innovation, by enabling creators and inventors to reach their full potential and contribute towards improving the competitiveness of our industries
- To promote South African arts and culture
- To solidify South Africa’s various international obligations, such as the Convention on Biological Diversity (CBD) and the Nagoya Protocol on Access to Genetic Resources and the Fair and Equitable Sharing of Benefits Arising from their Utilisation (Nagoya Protocol on ABS), in the service of our genetic resources and traditional knowledge associated with genetic resources.
The strategy employed in the IP Policy includes:
- Advancing a balanced and coordinated approach to IP that regulates IPRs in line with the South African Constitution
- Introducing key policy reforms that account for the development dynamics of South Africa
- Promoting innovation and a knowledge economy
- Leveraging competitive and comparative advantages to advance the transformation of the South African economy.
The IP Policy will be implemented in a phased approach with this document, in Phase 1, focusing on IP and public health, coordination in international forums, and the implementation of commitments undertaken in international agreements. This will be followed by a second phase that will focus on several remaining core concerns around IP.
The IP Policy recommends key reforms, which include:
- The introduction of substantive search and examination (SSE) for patents.
- The leveraging of flexibilities contained in the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) to ensure that South Africa protects IP rights while simultaneously promoting public health, local manufacture, research and development, innovation, food security, environmental considerations, transfer of technology and broad socio-economic development.
- The promotion of regional cooperation and integration on IP.
- A commitment to all relevant international obligations to which South Africa is a party.
- The promotion of economic empowerment through, among other means, the implementation of the “utility model” to support the registration of patents by resident small, medium and micro-enterprises (SMMEs), historically disadvantaged individuals, and companies who are operating in the informal sector.
- A coordinated approach to creating awareness about IP among South Africans, so as to protect nationally-owned IP that is related to indigenous resources, traditional innovation and traditional knowledge.
- The creation of a system for protection for traditional knowledge which will safeguard misappropriation and exploitation, as well as promote further research and development into products and services based on traditional knowledge.
- The promotion of international best-practices in IP that align with South Africa’s development objectives.
Inter-Ministerial Committee on Intellectual Property
An Inter-Ministerial Committee on Intellectual Property (IMCIP) is formed serves as a consultative forum and drafting team aimed at achieving a coordinated approach to the IP Policy formulation process. The IMCIP will also ensure implementation of the IP Policy in government programs.
The IP Policy identifies the key areas that are to be focused on in Phase 1, in the short term. These are listed below:
1. IP and Public Health:
a. Local manufacture and export in line with industrial policy
b. Patent–substantive search and examination
c. Patent opposition
d. Patentability criteria
e. Disclosure requirements
f. Parallel importation
h. Voluntary licensing
i. Compulsory licences
j. IP & competition law
k. Rule of law & legal certainty.
2. International IP Cooperation:
a. Multilateral arrangements
b. Regional and bilateral arrangements.
1. IP and Public Health
1.a) Local manufacture and export in line with industrial policy
The IP Policy aims to increase the local production of pharmaceuticals to meet domestic needs, as well as creating export opportunities within the African continent and beyond.
1.b) Patent–substantive search and examination
Currently South Africa makes use of a deposit system for patent applications. Patent applications are not subjected to a substantive search and examination procedure.
The IP Policy states that the examination of patent applications in South Africa is a key component of an evolved IP ecosystem. The document recognises that the introduction of an examination system will face capacity constraints and suggests a phased approach according to technology.
Steps are already being taken to implement substantive examination in South Africa.
Proposed amendments to the SA patent Act, Regulations and Examination guidelines are expected to be published for comment in December 2019.
20 trainee patent examiners (mainly life sciences) have received training from WIPO, The EPO and the Japanese Patent Office. Another 30 trainee patent examiners from other fields of technology are being appointed.
It is possible that the patent examination system will be implemented in 2020/21.
1.c) Patent opposition
Currently there is no provision for an opposition procedure. A patent may only be challenged after grant in an application for revocation that must be brought before the Commissioner of Patents who is a High Court Judge.
The IP Policy recommends that opposition procedures are made available both prior to and after grant. In the interim, due to capacity constraints, it is recommended that third parties be able to submit observations and that “existing provisions in administrative law be used in lieu of post-grant oppositions”.
1.d) Patentability criteria
The IP Policy states that, in line with emerging best practice, patentability criteria will be developed in order to promote genuine innovation through the patent system in South Africa, and the criteria will be implemented through the process of patent examination. The criteria should form part of the Patents Act and also regulations and guidelines for patent examination. The author of the IP Policy states that Article 27.1 of the TRIPS agreement gives a country like South Africa the flexibility to interpret and implement patentability requirements in a manner consistent with its constitutional obligations, developmental goals, and public policy requirements. Amongst other things, this would include the adoption of patentability criteria that address the country’s health and environmental concerns, as well as industrial policy objectives.
The IP Policy mentions Australia, which in 2012 adopted legislation that upwardly adjusted the standards of patentability in Australia.
1.e) Disclosure requirements
The IP Policy provides that in terms of Article 29(1) of the TRIPS agreement, an applicant for a patent must disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art. The patent law in South Africa already provides that a complete patent specification must sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed.
The IP Policy recommends that applicants be asked to provide information regarding the examination of corresponding patent applications in other countries. This will assist the examiners during the search and examination procedure.
1.f) Parallel importation
The IP Policy is in support of international exhaustion of patent rights and allowing parallel importation, particularly in the pharmaceutical field.
The Policy mentions that the law permitting parallel imports should be designed with robust safeguards to prevent the entry of counterfeit medicines into South Africa.
Article 30 of the TRIPS Agreement allows Members to provide limited exceptions to patent rights. The IP Policy mentions the following exceptions:
The IP Policy recognises that South Africa has a so-called Bolar exemption in its Patent Act which allows a party to obtain regulatory approval for a product prior to the expiry of a patent covering the product.
Research and experimental use
Currently, the South African Patents Act does not include a “research exemption”. The IP Policy suggests that the introduction of a research exemption can assist with growing a country’s technological base, as has been done in Brazil and Switzerland.
The IP Policy recognises that voluntary licences have been granted in the health sector and in particular that this has led to lower prices for and greater accessibility to antiretroviral drugs. The document recommends greater transparency in respect of the terms of these licences, and encouragement to conclude such licence agreements.
The scope of compulsory licences is to be strengthened and clarified in a manner that is fair and compliant in relation to both international obligations and national law. Following due process, guidelines will be introduced, including legal process for government use, and a renewed effort to facilitate the process of exporting IP goods, such as medicines, to the African continent.
Currently Section 4 of the Patents Act entitles a Minister of State to use an invention for public purposes, but requires negotiation on conditions of use, and if agreement cannot be reached then the State may approach the Commissioner of Patents to determine the conditions. The IP Policy suggests that, in the light of Article 31(b) of the TRIPS Agreement prior negotiations should not be required.
Compulsory licences for export
The IP Policy states that the South African Government is cognisant that of the limitations of “Paragraph 6”, and will engage stakeholders to find ways of ensuring simpler implementation. This is a reference to the implementation of Paragraph 6 of the Doha Declaration on the TRIPS Agreement and Public Health which relates to compulsory licences for local manufacture and export.
IP and Competition Law
The IP Policy recommends a joint effort, together with the Competition Commission, to clarify the remit and scope of intersection between competition law and IP. The Policy states that the application and enforcement of competition law ought to be done in a manner that fosters the protection and enforcement of competition on the merits, while recognizing Intellectual Property Rights and their potential to contribute to technological innovation.
Rule of Law, legal certainty & security of investments
The IP Policy recognises that the rule of law in South Africa is sacrosanct, and that reforms to South Africa’s patent system can only be implemented in a lawful, transparent, fair and open process.
2. International IP Cooperation
2.a) Multilateral arrangements
South Africa will explore legal instruments and international treaties that are critical to advance the objectives of the IP Policy. This will include:
- Locarno Agreement Establishing an International Classification for Industrial Designs (1968);
- Strasbourg Agreement Concerning the International Patent Classification (1971);
- Vienna Agreement Establishing an International Classification of the Figurative Elements of Marks (1973);
- Nice Agreement Concerning the International Classification of Goods and Services for Marks (1979);
- Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (1989);
- Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled (2013).
2.b) Convention on Biological Diversity (CBD)
South Africa is considered to be the third most biologically diverse country in the world. South Africa has already implemented aspects of the CBD, for example the National Environmental Management: Biodiversity Act, 2004 (Act No. 10 of 2004) (NEMBA or Biodiversity Act) and the Bioprospecting, Access and Benefit Sharing (BABS) Amendment Regulations of 2015, and is a signatory to the Nagoya Protocol. South Africa will continue to implement the CBD and its protocols and remain positively engaged internationally.
2.c) World Health Organisation (WHO)
South Africa will continue to participate in R&D initiatives and multilateral IP forums in a coordinated fashion ensuring that the positions adopted are consistent.
2.d) Political Formations such as BRICS
South Africa will aim to leverage BRICS cooperation to advance its objectives.
2.e) Regional and Bilateral Agreements
South Africa will work with regional partners to facilitate increased coordination to ensure that regional IP arrangements contribute to a development-focused model of regional economic integration in Africa.
Phase 2 will focus on:
- Intellectual Property Rights (IPRs) and the informal sector
- Branding of South African goods and services (collective marks, certification marks and GIs)
- Safeguarding South Africa emblems and national icons
- Commercialisation of IP
- IP localisation and beneficiation
- IP awareness and capacity building
- IPRs and the environment/climate change/green technologies
- IP in agriculture, IP and biotechnology, genetic resources and genomic sovereignty
The comprehensive IP Policy will be developed through a coordinated process through the Inter-Ministerial Committee on Intellectual Property, informed by South Africa’s development imperatives.