Visit by Professor Louis Harms

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Jane Lambert

One of our most distinguished members is Professor Louis Harms. Professor Harms was until recently the Deputy President of the Supreme Court of Appeal of South Africa which is the highest court of that country for all but constitutional matters. He is a distinguished intellectual property lawyer and holds professorships at several universities. His career is summarized in "A Singular Colleague",  an article that appeared in the December 2011 edition of the Advocate published by the South African Bar Council.

Having retired from the South African Supreme Court, Professor Harms practises as an arbitrator and he heads a panel of specialist intellectual property arbitrators and mediators from these chambers which I shall discuss in a future article.  He will be in chambers on the 25 Sept and has kindly offered to give a special lecture entitled "The principle of self-interest rightly understood' to an invited audience.  I shall also review that talk in this blog.

Professor Harms will visit England in the same month as the publication by Dr. Rob Davies MP, the South African Minister of Trade and Industry, of a Draft National Policy on Intellectual Property.  As South Africa is one of the so-called CIVETS (a group of rapidly industrializing countries immediately behind Brazil, Russia, India and China) with a population of 53 million in a land area of 1.2 million square kilometres, highly developed industries and agriculture, enormous natural resources and a GDP of US$375 billion, any statement of policy by its government demands attention.

Although others appear to have welcomed the draft policy (see Linda Daniels "New Draft South African IP Policy Receives Initial Positive Reactions" IP Watch 9 Sept 2013) I have to say that I found it confusing.  It appears to suggest that the Companies and Intellectual Property Commission (the South African patent office) grants patents for inventions that do not merit such protection (so-called "weak patents") although it gives no evidence that that is the case.  Intrigued by that suggestion I looked at the South African Patents Act 1978 which seems remarkably similar to, and possibly modelled upon, our own. S.34 of that Act provides for examination and 61 for revocation of invalid patents. The Patent Regulations 1979 which implement the Act contain the same sort of provisions as our Patent Rules.  Appreciating that what appears on paper may not necessarily be the same as what happens in practice I visited the website of the South African Institute of Intellectual Property Law (the professional association of patent and trade mark attorneys who are lawyers in South Africa and patent and trade mark agents who are like patent attorneys here) and the sites of some of the Institute's member firms some of which were impressive. Unless I am very much mistaken there does not seem to be any lack of expertise in intellectual property law in South Africa.   So I have to confess that I really do not understand the Minister's point there.

I was similarly confused by the reference to "undisclosed information" as provided by art 39 of TRIPS as "data protection." In her talk to the IP Bar Association a few weeks ago Professor Aplin of King's College had equated undisclosed information with trade secrets and other confidential information ("IP Bar Association Garden Party" 24 July NIPC Law) which is what I had always considered it to be.  Data protection, at least in this country, is akin to privacy and the proper handling of information likely to identify living individuals.  The point that the Minister seems to make is that rules preventing disclosure of trade secrets and other confidential information should not be used by drugs companies to prohibit the release of the results of clinical trials to generic medicine manufacturers which is, of course, a fair one (see "The Bolar Exemption" on the IPO website).

Dr Davies is also against bilateral investment treaties which is understandable (see my article "Bilateral Investment Treaties: Claiming Compensation from Foreign Governments under Bilateral Investment Treaties for failing to provide adequate IP Protection" 27 July 2013 NIPC Law to understand why) and patent law harmonization which is not.   To co-ordinate IP policy across government departments is a laudable objective but I have to say that a great country like South Africa that has suffered so much from Apartheid deserves better than what is on offer.

Of course, Professor Harms cannot be held responsible for the policies of his government any more than we can for ours, but as he is South African and, more to the point, as he will be here I will therefore ask him some very searching questions on the protection of intellectual assets (particularly those of my British clients) in his country.

Patent attorney Barbara Cookson of Filemot Technology Law Ltd writes:
"On South Africa, the reason the policy says that they grant weak patents is that there is no examination system at present so they just rubberstamp them and it one of the countries where you can get a patent really fast. The agents try to make money by delaying grant for 12 months and trying to persuade applicants to accept a review of the specification or make amendments to conform to amendments agreed in countries where the patent has been examined. It is a good idea for them to introduce an examination system. I would expect the profession to welcome it. Some of the public health issues in the policy look a little more worrying and I am sure the generic and drugs businesses will have a lot to say about those."

Comments

  1. I am grateful for Barbara's comments and of course I accept them. I can't see how the CIPC can fulfil its statutory function without examination. S.25 of the Act requires an invention to be new, to involve an inventive step and to be useful. S.34 requires the CIPC to satisfy itself that an invention complies with the Act and I can't see how it can possibly do that unless it considers the prior art. I assume that there is no patent for a wheel on the South African register.

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  2. In practice, the South African patent system is an "honour system" - a patent is granted, without substantive examination, on the say-so of an applicant.
    However, the applicant makes a prescribed declaration to the effect that a patent granted on the application will be valid; and a deliberate or negligent misrepresentation in the declaration is a ground for revocation.
    South African practitioners advise delaying acceptance and reviewing the specification so as to place the applicant in the best position to defend the declaration. Barbara's suggestion that this is a money-making scheme by South African agents is simply wrong.
    For and South African patents with a foreign counterpart, it is relatively easy for a challenger to identify objections that have been raised in examination elsewhere. A South African patent that has not been amended to address known grounds of invalidity will generally be vulnerable to revocation, and unenforceable.

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