South Africa: Africa's Percent And The Digital Future

According to Wipo's latest published statistics for the year 2015, the entire African continent collectively was the recipient of approximately 0.5 percent of the world's patent filings in that year. The reported figure for Africa is approximately 14900 patent applications (including PCT national phase entries) out of a global total of nearly 2680900 applications. Approximately half of those patent applications were reported by the South African Patent Office (The South Africa Patent office reported 7497 applications in 2015).

For trademarks, the reported figure is slightly higher in terms of global percentages, with approximately 207017 applications reported to WIPO out of nearly 7.5 million applications worldwide (for the purposes of its statistics, WIPO regards each class designated in a multi-class filing as a single class count filing). This brings the slice of the global trademarks cake for African jurisdictions to just under 3 percent.

We are told by practitioners in various jurisdictions that the statistics may not necessarily be accurate for a number of reasons, for example some Intellectual Property Offices (IPO's) in Sub-saharan Africa may not necessarily report their data to Wipo and it can be argued that the data may be inaccurate or poorly collected in other instances due to a lack of proper record keeping and manually kept records.

Despite the compelling arguments why the statistics may be underreported, the statistics are still an indication that industry, both global and regional in Africa, have very thin IP portfolios covering the region when compared to other regions. In addition, at least as far as reported figures are concerned, there has been a stagnation in Africa for the past decade in terms of reported patent filing numbers. There has been a slightly impressive increase in trademark filings, but there is still no filing frenzy boom of the kind seen in Asia in recent years nor the consistently high volumes in developed regions of the world. The figures below summarize the reported volumes for the continent.

Africa - Patent filling volumes 2004-2015

Africa - Trademark filling volumes 2004-2015.

Much has been written and said about the prospects of economic growth on the continent looking more positive than in previous decades and we agree with this assessment. After all, there have been signs of growth south of the Sahara for at least the past decade and the population explosion alone is likely to continue fueling the need for consumer goods, whether they are manufactured in Africa or not. At least strategically, most in-house IP counsel would agree that it makes strategic sense to increase the size of IP portfolios in Africa and most would admit it is foolish to ignore Africa in any strategy discussion.

If there is, indeed, a general consensus amongst IP counsel that IP owners are under-invested in their African IP portfolios, what is holding IP owners back from filing more liberally? One important factor is the domestic market. The boom in China has been fueled largely by Chinese firms filing domestic applications, yet if we look at the statistics for Africa a very large percentage of the filings are foreign filings. There is, perhaps a need for more awareness amongst African firms, especially SME's that IP registration and protection is a necessary grudge purchase, even on a startup budget.

Besides awareness, there is in our opinion possibly another issue that may be deterring IP counsel from investing more in Africa and the fact that statistics may be inaccurately reported highlights this issue. An important consideration for in-house IP counsel when deciding where to file and to what extent are the questions whether or not a potential filing jurisdiction has an effective and efficient system to both protect and enforce IP rights. This is not only a strategic issue but also one of cost and convenience. Jurisdictions where it is difficult and costly to register IP fall into a category where the IP counsel only identifies a few key patents and trademarks to file, so that the protection can be adequate or, if the jurisdiction is not a key jurisdiction, the IP counsel could strike the jurisdiction off the list (and the budget) entirely. This approach is rather unfortunate as immediate cost and efficiency considerations can often override idealistic long term strategy considerations.

To increase the filing volumes in Africa and to make it attractive for IP counsel to invest larger percentages of their portfolios in Africa, we think that digitization, efficiency and automation at IPO's and in practice are key issues that require much more attention in Africa. Global IP and also its practice, at least when it comes to filings, prosecution and renewals is becoming fast, digital and paperless. The corresponding expectation of the client is that technological advancements mean that the administrative components of filing and prosecution ought to be completed with relative ease and at a low cost. However, since administrative work in many African jurisdictions often needs to be done manually, this results in a high administrative burden of the old kind, with higher associated costs that are much more difficult for an in-house IP counsel to justify to their boards as necessary costs.

The cost and convenience issue is not only about the direct cost of filing, but also the cost burden placed on an in-house team which often is under budget pressures. If an in-house counsel files many patents and trademarks in an administratively inefficient jurisdiction, the administrative burden could be absorbed by either hiring more paralegals or by spending more on layers of agents to manage the administrative burden. Either approach can be costly and the question can be raised if it really justifies doubling the size of the budget to pay several in-house paralegals or agents to spend their day chasing after files that are lost. From this perspective, in an era where IP strategy is a middle management issue and cost reduction is an upper management constraint, it is easy to see why filing jurisdictions that are perceived as costly and inefficient are simply struck off the list of filing destinations.

Efficiency is not all about automation and being digital, as someone still has to do the work. But, in Africa a lack of digitization in many jurisdictions and in some instances more general inefficiency can create enormous administrative burdens, least not because some routine tasks such as performing a search have to be done manually whereas there is an expectation by the client that basic information ought to be easily available and accessible at a reasonable cost.

In conclusion, the possibility in the future for IP owners to file fast, digital and paperless in Africa, as can be done in North America, Europe and increasingly in Asia, might be the missing ingredient that is preventing a filing boom in Africa.

There is indeed a lot of hope that change is on its way on the continent, but this change needs to accelerate. One example is Microsoft's 4Afrika program, which is reported to be developing an online IP registration system in Kenya and for other African jurisdictions. Then of course, in South Africa the PTO's online platform and extensive efforts made by the registry to digitize is an encouraging step in the right direction.

However, more needs to be done for there to be a digital culture, which is becoming the norm in developed countries and this cultural shift has to be driven by IP professionals. For our part, paper files and manual diaries for example, are archaic and as African IP attorneys we should try to be as digital and paperless as is legally possible to drive and support the necessary changes at our IPO's. Ideally, a technological shift across the entire African industry would reduce the overheads of African IP firms, increase the volumes of substantive work that clients are more prepared to pay for and in general increase the client's appetite for filing higher volumes in Africa. We hope so.

The article was first published on Afro IP in September 2017.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
 
Related Articles
 
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions