2016 has been a busy year for IP on the African continent, with developments in Liberia, the Cayman Islands, South Africa, Zambia and Namibia, among others.
Liberia: Intellectual Property Act and Swakopmund Protocol membership
Liberia's House of Representatives has approved and published the Intellectual Property Act, 2014 (the "new Act"), which repeals the Industrial Property Act of 2003. The regulations are currently being drafted.
The new Act has cleared up the uncertainty regarding the applicability of certain international treaties, including the Paris Convention, the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement. There is, however, still some uncertainty as to the applicability of the Banjul Protocol on Marks. The new Act further provides requirements for the filing of applications for the registration of Geographical Indications ("GIs"), as well as for the filing of patents, utility models, industrial designs, layout-designs of integrated circuits, trade marks and the protection of copyright. In addition, Liberia recently became the latest member of the Swakopmund Protocol on the Protection of Traditional Knowledge and Expressions of Folklore (the "Protocol") within the framework of the African Regional Intellectual Property Organization ("ARIPO"). It deposited the instrument of ratification with the Zimbabwean Ministry of Foreign Affairs on 25 October 2016, bringing the number of member states party to the Protocol to eight. The other member states are Botswana, Zimbabwe, The Gambia, Rwanda, Malawi, Namibia and Zambia.
The Protocol was adopted in Swakopmund, Namibia on 9 August 2010 and came into force on 11 May 2015. Its aim is to protect African traditional knowledge and folklore and ensure that it may be effectively utilised for the welfare of African people. Accordingly, its purpose is to:
- protect traditional knowledge holders against any infringement of their rights as recognised by the Protocol; and
- protect expressions of folklore against misappropriation, misuse and unlawful exploitation beyond their traditional context.
ARIPO has made its published industrial design data available on the Designview search tool, with effect from 31 October 2016.
Designview provides a centralised online database administered by the European Union Intellectual Property Office ("EUIPO"), containing registered design information from 52 participating offices and access to more than 10 million designs.
The ARIPO designs on Designview may be accessed at www.tmdn.org.
Cayman Islands: Publication of new IP laws
Three new IP laws were published on 31 August 2016. These laws, which will come into force on a date to be announced, are the Trade Marks Bill, 2016; the Design Rights Registration Law, 2016 and the Patents and Trade Marks (Amendment) Bill, 2016.
These new laws will provide for a system of direct registration of trade marks in the Cayman Islands, rather than through extension of UK trade mark registration. A system will also be created for UK design registrations to be extended to the Cayman Islands. In addition, there will be some amendments to the present system of UK patent extension into the Cayman Islands.
South Africa: Intellectual Property Consultative Framework
The draft Intellectual Property Policy, which was published by the South African Department of Trade and Industry ("DTI") on 4 October 2015 for public comment, has been subjected to wide-spread criticism. In an encouraging development, on 16 July 2016, Cabinet approved an Intellectual Property Consultative Framework, which was subsequently published in September 2016 for public comment, with an extended deadline that expired on 14 October 2016.
The framework sets out certain key areas requiring urgent attention, "where a more equitable balance could be struck between private and public interest". The framework states that the pharmaceuticals industry is one of the priority sectors identified by the Industrial Policy Action Plan and identifies those areas as requiring immediate action as:
- adopting a substantive search and examination system in relation to pharmaceutical patent applications and affording third parties an opportunity to "bring their resources to bear and present relevant information to the patent examiner in [the] opposition process". Although not entirely clear, this seems to suggest that third parties should be entitled to intervene in the examination process between the patent applicant and the patent examiner.
- developing an appropriate approach to patentability criteria to address public health concerns, to the extent permissible by the agreement on Trade-Related Aspects of Intellectual Property Rights (the "TRIPS Agreement"). South Africa accepted the Doha Declaration on the TRIPS Agreement and Public Health on 23 February 2016.
- considering the use of patent disclosure requirements in a manner that uses the flexibility of TRIPS. In this regard, reference is made to article 29 of TRIPS, which provides that "Members shall require that an applicant for a patent shall disclose the invention in a manner sufficiently clear and complete for the invention to be carried out by a person skilled in the art and may require the applicant to indicate the best mode for carrying out the invention known to the inventor at the filing date or, where priority is claimed, at the priority date of the application."
- parallel importation, particularly in the context of access to medicines. It is suggested that explicitly incorporating total international exhaustion of patent rights would clarify matters of interpretation of section 15C of the Medicines and Related Substances Act, 1965. Section 15C of this Act, administered by the Department of Health, governs parallel importation of medicines into South Africa.
- investigating the effectiveness of the early working/Bolar exception in a 2002 amendment to the Patents Act, 1978; and further limited exceptions to patent rights, to the extent permitted by article 39 of TRIPS.
- investigating "a mix of policy options" where voluntary licences/mechanisms of patent exploitation prove inadequate.
- preparing proposals around compulsory licensing and the use of patented subject matter by the South African government, including considering methods of streamlining compulsory licensing processes, exploring guidelines for determining adequate remuneration for patent holders and reviewing the requirement of prior negotiation with patent holders in respect of government use of patented subject matter.
- developing guidelines in respect of the interface between IP and competition law and, having regard to the scope under the TRIPS Agreement to permit members to use competition policy as an instrument to facilitate access to medicines.
- considering the Lisbon System for the International Registration of Appellations of Origin by an inter-ministerial committee on IP, given that the current position (under which South Africa does not have a statute dealing specifically with GIs nor a special registration system for GIs in respect of kinds of products) may change.
The DTI has informed stakeholders that it plans to develop the terms of the framework in an ongoing consultative process until the finalisation of a South African IP Policy (which has a target date of March 2017).
South Africa: New appointments to the CIPC
The South African Companies and Intellectual Property Commission ("CIPC") registrar of patents, Elena Zdravkova, retired at the end of April 2016, leading to a number of new appointments. Dr Nompumelelo Obokoh has been appointed divisional manager and reporting to him is Trod Lehong, who has been appointed as senior patents manager, commencing mid-November 2016. Dr Obokoh and Mr Lehong report to Nomonde Maimela, the executive manager.
In addition, the CIPC has appointed 20 patent searchers to be trained as patent examiners once substantive examination is provided for in South Africa.
Zambia: New registered design legislation
Zambia's new Industrial Design Act, 2016 (the "new Act") came into effect on 6 June 2016, repealing the Registered Design Law of 1958 (the "old Act").
In particular, some notable changes under the new law include that absolute novelty is required, rather than local novelty, which was required in the old Act. Priority claims of six months are provided for, and prior disclosure at a recognised exhibition will be excused if occurring within six months of the filing date.
Certain designs have been excluded from design protection, including those contrary to "written laws or well-established natural laws" or "inconsistent with public order, public morality, principles of humanity and environmental conservation", and "designs which comprise a flag, emblem, armorial bearings, abbreviation, decoration, coat of arms or other official sign and hallmark of Zambia or any other convention country or intergovernmental organization".
In terms of the new Act, the creator of the design is the proprietor. "Creator" is defined as the person who creates the design, although the Act does provide for some exceptions, such as in the case of designs created by employees and commissioned designs. However, in the case of designs created by employees, where the design "acquires an economic value much greater than the parties could reasonably have foreseen at the time of concluding the contract", the Act provides that the employee is entitled to "equitable remuneration" either as agreed or determined by a court. Furthermore, in alignment with copyright protection, the new Act provides that the design proprietor is the person who has made arrangements for the creation of a design that is computer generated.
The new Act also provides for a period for opposition on various grounds, such as lack of novelty, as well as for an application for cancellation by any interested party. Furthermore, a design creator may file an application for an order to replace the design applicant's name with their own, provided this is done within three years of becoming aware that a registered design has been filed for their creation.
The new Act specifically provides for restoration of a design, provided that the omission to pay the maintenance fee was unintentional and no undue delay has occurred in making the application for restoration.
The duration in terms of the new Act is five years from the filing date, renewable for a further five years. This is a reduction in term, in that previously a design registration had a term of 15 years.
The new Act provides for a research exclusion, in that rights granted to the registered design proprietor do not extend to acts done for scientific research, experimental use, teaching use, and certain government use.
The new Act provides that transfer or license of a design must be in writing and must be recorded. The registrar may refuse to record a licence that imposes "unjustified restrictions on the licensee" or that is "prejudicial to the economic interests" of Zambia.
The new Act also provides for compulsory licences that can be sought on various grounds, including when in the interests of public health or safety, or where the registered design proprietor has failed to meet the demands of the domestic market. Such an application can only be brought within three years of the registration of the design.
In addition, the new Act provides for government "walk-in" rights in respect of a registered design when necessary for public health, the environment or national emergency. The owner's consent is not required, but there is provision for remuneration of the design proprietor.
Namibia: Industrial Property Act, 2012
Namibia's long-awaited new Industrial Property Act, 2012 (the "Act") has still not been enacted. Once in force, the Act will provide for entrance into Namibian law of the Paris Convention, ARIPO (Banjul Protocol), the Madrid Agreement and Protocol, the Patent Cooperation Treaty and the Hague Agreement Concerning the International Registration of Industrial Designs. It is hoped that the Act will finally be brought into force in early 2017.
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