Phase 1 of South Africa’s IP Policy has been finalized and is available here.
The IP Policy is South Africa’s attempt to formulate a cohesive statement of its IP position and goals and is the result of several years of work by a special inter-ministerial committee. IP is said to be a core element required to transition South Africa to a knowledge economy and move away from an over-reliance on natural resources.
A major focus of the IP Policy is the introduction of substantive patent examination. This will overhaul South Africa’s current patent registration system and align us with the practice in most major economies.
Due to capacity constraints, the introduction of substantive patent examination will happen in a phased manner. At first, only patent applications in certain fields of technology will be substantively examined. Those fields are still to be announced but will no doubt include pharmaceuticals, as the goal of expanding access to medicines by limiting the grant of broad and possibly invalid pharmaceutical patents is one of the key issues identified in the IP Policy.
The TRIPS Agreement requires that patents be available and patent rights enjoyable without discrimination as to the field of technology. According to the IP Policy, examining only certain fields of technology at first is not prohibited by these provisions, which do not imply that patent applications in all technologies have to be subjected to the same approval process.
Patent opposition is also addressed in the IP Policy. Although both pre-grant and post-grant opposition is eventually desired, initially it is proposed that third parties be allowed to submit observations to the patent examiner. Anonymous submissions would not be allowed. It will be interesting to see whether our courts in future hold that some form of estoppel would apply to arguments submitted as part of such observations, which may limit the extent to which third parties would be willing to put forward their best arguments in third party observations.
The policy also aims to utilize flexibilities in TRIPS by making amendments to the Patents Act that would:
- permit parallel importation of pharmaceuticals, so that genuine pharmaceuticals bought in a foreign country can be imported into South Africa without approval of the patent holder in some circumstances;
- introduce a research exemption to patent infringement;
- increase the accessibility of current compulsory licensing provisions, possibly by creating a regulatory process for adjudicating these rather than referring these disputes directly to the Courts as is currently the case; and
- enable the State to exercise its march-in rights without negotiation with the patent holder under certain circumstances, subject to procedural fairness.
Another interesting proposed reform is the introduction of utility models, which are a lesser form of patent that typically have a lower threshold requirement for inventive step and are of shorter duration than standard patents. The policy refers to utility models as supporting the registration of patents by small companies and by individuals, although international experience has shown that utility models are more often used by large corporates as an extra layer of protection alongside patent rights.
To actually implement these reforms will require an amendment to the Patents Act, and it is expected that this legislative process could take a few years. In the meantime, one possibility is that the current group of patent examiners could build the Patent Office’s capacity and familiarity with substantive examination by issuing non-binding examination reports.
The South African IP industry eagerly awaits these developments.
By Ralph van Niekerk, Patent Attorney