Changes afoot at Africa’s busiest registry

The South African IP registry, which operates under the guise of the Companies and Intellectual Property Commission (CIPC), is arguably Africa’s busiest IP registry, processing around 12,000 patent applications and 25,000 trademark applications a year. These numbers are growing steadily, albeit lagging behind the substantial growth being experienced to the north.

The CIPC has been plagued by sporadic IT issues over the past few years as it gears up to provide publicly accessible searching facilities and e-filing, while also contemplating accession to the Madrid Agreement and the introduction of some form of patent examination. A strategy for upgrading and reconfiguring systems is now underway, with the results expected in around six months. The launch of trademark e-filing is expected to come into force as soon as the end of August 2013. The CIPC has also advised that a public e-searching facility has been developed, but will become available only once IT issues have been resolved. It is hoped that the new improved systems will offer online access to the Designs Register as well as copies and status of registered patents – at present, patent copies are accessible theoretically, but in practice, many of the specifications have not yet been uploaded and the access format is not user friendly.

Another issue that has plagued the Trademarks Office is the backlog of trademark opposition matters. At the present pace, a new opposition matter will not be heard for three years. The Trademarks Office has recently begun to attempt to reduce the backlog by referring matters to the High Court. This will not translate into higher costs for the parties and such proactive steps are to be welcomed. On the patents side, pressure has been mounting from generic-friendly activist groups and political figures seeking to improve access to less expensive medicines to amend the Patents Act (57/1978) in order to introduce some form of substantive examination and perhaps introduce provisions that mirror Section 3d of the Indian Patent Act. Overly strict compulsory licensing provisions could also be in line for amendment as advocates for the better balancing of rights between patents and patients look to eliminate what they see as inadequacies in the system, which promotes evergreening and the granting of patents for subject matter that is neither new nor innovative. The IP profession is gathering its thoughts (via the South African Institute of Intellectual Property Law) on recommendations to the CIPC regarding patent examination, with considerations extending from maintaining the existing status quo (no substantive examination), to setting up a fully fledged examination system and department at the CIPC. Practical considerations are likely to favour a middle-of-the-road approach, such as non-compulsory examination, cognisance of examination reports from other jurisdictions or even outsourced examination.

At present, South Africa is a fairly low-cost destination for registration of patents and trademarks and, while progress is always welcome, the South African IP profession is now awaiting notification from the CIPC regarding the amount of “substantial” official fee increases which have been proposed to the National Treasury. It is anticipated that increases (at least as far as application costs go) will not affect individuals and small companies, but large companies are expected to be asked to pay more in a cost structure similar to that applied by the US Patent and Trademark Office.

It is hoped that the the cost increases will translate into an improved product offering by the CIPC. Budgetry constraints seem to have proved a stumbling block for the registry in recent years, and the increase is perhaps an acknowledgement that investment in systems and people will need to be made to ensure that the efficiencies continue to improve at a good pace.