While South Africa is still a non-examining country, the adoption of the new IP Policy has allowed it to make a move towards more substantive examination, with the aim of revising the legislation and aligning the domestic IP regime with global norms. Elsewhere, there has been an increase in funding from the government and various stakeholders for R&D activities, with the introduction of an Innovation Fund to provide a more effective system for the commercialisation of research products and thus justify the government’s efforts to invest in scientific R&D.
- Adams & Adams
- Spoor & Fisher
- KISCH IP
- Von Seidels
- Webber Wentzel
- Brian Bacon Inc
- De Beer Attorneys
- Hahn & Hahn Inc
- Smit & Van Wyk Inc
Widely regarded as the country’s leading IP firm, Adams & Adams is impressive whichever way you look at it. It has 22 associate offices across the continent, alongside four in its native South Africa; it is home to 140 attorneys; it represents nearly half of the Fortune 500; and it provides unique business, economic and political advisory services alongside its highly specialised patent offering. The ensemble’s prosecutors take advantage of sophisticated internal systems and technical tools to ensure that their output meets the highest demands in terms of quality. With seven individuals recognised for their prosecution expertise – more than any other firm – Adams & Adams has an incredibly deep bench. Three of these – Nicky Garnett, James Davies and Colin MacKenzie – join the IAM Patent 1000 ranks for the first time this year; while Louis van der Walt, Janice Galvad, Pieter Visagie and Johnny Fiandeiro all make a reappearance. Garnett serves as head of Africa patents and is tireless in her efforts to protect clients across borders; she manages a sizeable team with singular efficiency. Davies is a master of the electrical and software arts who is in hot demand for his incisive patent searches. “Commercially perceptive adviser” MacKenzie “is terrific at aligning IP strategies with the best interests of clients”. Former industrial chemical engineer Van der Walt stands out for his “deep knowledge of South African and international patent law, which is second to none”. Previously chair of the patent department, he continues to provide strong guidance to the team. The current chair is Galvad, who takes the lead on all inbound patent and design matters; she is also supervising the implementation of new efficiency system, with resounding success. Chemistry expert Visagie’s practice plays out on the world stage – he has abundant experience prosecuting patents before Asian patent offices, as well as those in Europe and the United States. Fiandeiro is a top patent drafter – he has taught students on the subject for years – and shines brightest in the telecommunications and software fields. The litigation department is similarly stacked with talent, with Russell Bagnall, Dario Tanziani and Danie Dohmen forming a potent strike force for prestigious clients. Bagnall and Tanziani make light work of complex, multi-pronged cross-border cases in the life sciences; while Dohmen has set litigation benchmarks over many years and is also a noted licensing authority. Where patent actions are complicated by dint of competition law concerns, Adams & Adams has an ace up its sleeve in the form of Alexis Apostolidis.
Brian Bacon Inc
Compact but dynamic Cape Town-based firm Brian Bacon draws clients from across the world and from a variety of industries – not least the pharmaceutical sector, in which it represents many generic drug manufacturers. They appreciate the tailored and consistently high-standard service on offer from Colin Truter and Vanessa Crease, among others. Truter is a precision draftsman with deep domain expertise in prosecution. Leveraging his industrial engineering background and litigation experience, he knows what it takes to procure watertight patents. Crease is endorsed as “an excellent specialist in the biotechnology field with a large client following”.
De Beer Attorneys
De Beer Attorneys makes its debut in the IAM Patent 1000 for 2020; the firm has been building out its capacity in recent years and now boasts a mature and strategically sophisticated practice that spans the contentious/non-contentious divide. The organisation is run by Elaine Bergenthuin, a commercially astute IP professional with a gift for delivering innovative solutions customised to fit clients’ business needs. Having previously worked at a leading London patent attorney firm, she has a long track record of satisfying the demands of top-tier multinationals.
Continental powerhouse ENSafrica is “one of the few, if not the only firm capable of coordinating patent filings across Africa, including in the most difficult jurisdictions”. Many industry leaders have transferred their portfolios here as a result, driving remarkable growth in the firm’s IP practice in recent years. The highly specialised patent team – which includes seasoned practitioners across the technological spectrum – benefits from the redoubtable leadership of prosecution and strategy maven Rowan Forster. “Rowan has outstanding communication skills and works in a very timely manner. He has strong fundamental patent law and technical skills, and is excellent at distilling the complexity out of his advice so that his recommendations can be easily understood and implemented.” Also garnering glowing notices is Joanne van Harmelen, who takes the reins of the biotechnology and life sciences division. “Joanne has an incredible depth of experience in the industry and is efficient, approachable and responsive. She is also forward thinking and innovative, and is always looking for ways to add value to her professional relationships. She considers IP matters holistically and from a business perspective.” This is a trait she shares with Waldo Steyn, who heads the commercial IP team. “They both have business backgrounds and know their clients’ goals, which results in the best possible outcomes. Their work and service ethic is extraordinary and they can be recommended without hesitation to any technology entrepreneur.”
Hahn & Hahn Inc
Giving clients the best of both worlds, Hahn & Hahn is both mid-sized, full-service commercial law firm and IP boutique all in one. Zooming in on the patent practice reveals a robust prosecution division that can secure cast-iron patents not just in South Africa, but across the continent. The ensemble plays a strong hand in litigation, too, making it an effective one-stop shop for those seeking to protect and enforce their rights. The key contact is Janusz Luterek, who demonstrates impressive range in his considered treatment of cutting-edge food, life sciences, mechanical and electrical innovations. Having worked in industry prior to entering private practice, he has walked many miles in clients’ shoes, which facilitates smooth communication and close working relationships.
Market reports indicate that KISCH IP is “investing significantly in its practice and bringing on new talent”; though a historic firm, in business for nearly 150 years, it has remained resolutely forward looking and is admired for the dynamism of its patent offering and sterling client service, both at home and across Africa. Chair of the executive committee and head of patents At van Rooy, chairman Adelhart Kruger and directors Ursula Baravalle and Jaco Theunissen are all essential names to know. Van Rooy is hailed for his life sciences, chemical and medical expertise and dual filing and litigation prowess. Kruger, whose background is in electrical engineering, is a sought-after font of global prosecution know-how and a percipient representative in administrative proceedings. Baravalle has intimate knowledge of Fischer-Tropsch patents and is considered a go-to among leading chemical companies and elite academic institutions. Medical device guru Theunissen is ranked on both the prosecution and transactions tables, which pays testament to his versatility.
Smit & Van Wyk Inc
“Efficient and highly capable IP boutique” Smit & Van Wyk makes its well-deserved debut in the IAM Patent 1000 this year. The firm has seen impressive growth in its domestic and international patent prosecution practice, thanks to its high-quality, competitively priced services and the attentiveness with which its compact, eight-strong team handles each instruction. Taking charge of the group is biotechnologist and crack patent drafter Chantal Hoffelner, who “produces work of the highest standard while ensuring deadlines are met”. “Chantal goes above and beyond in terms of communicating directly with inventors, for example, and is deeply knowledgeable when it comes to South African and international IP legislation.” Also highly rated is Wessel van Wyk, a “top professional with an excellent sense of what a great customer service looks like”. Aerospace is a happy hunting ground, as he previously held engineering and managerial roles in the sector, but he operates with fluency across a diverse continuum of technologies.
Spoor & Fisher
Lavish praise marks out Spoor & Fisher as one of the premier IP firms both in South Africa and across the wider continent. “It has accomplished partners at every level who are all about relationship building. They do excellent work and provide a consistently superior service – whatever you need done in Africa, you can get it from them.” With 16 partners among 77 total employees in the patent department, there’s nothing the firm cannot do – its prosecution, litigation and transactions practices run deep. On the non-contentious side, Mark Kemp, David Cochrane, Lance Abramson, David Gilson and Lodewyk Cilliers all make a return to the guide this year. Kemp acts for many prestigious UK and US companies with business in Africa, but demonstrates impressive range in his ability to tailor his service to domestic start-ups and academic institutions too. Fellow chemistry expert Cochrane is “very collaborative at a strategic level and a hands-on, responsive partner who thinks in alignment with his clients”. Sources also highlight his excellent international network. They are based in Cape Town and Pretoria respectively. Covering the electrical arts from his office in Johannesburg, prosecutor Abramson stands out for his efficiency and level headedness. Gilson comes from a physics and applied mathematics background, giving him enviable technical versatility. Cilliers takes care of all things mechanical, while devoting time and effort to writing well-received works on patent, design and IP law. Anchoring the litigation unit, meanwhile, are gold-tier members Hugh Moubray and Jonathan Whittaker, both of whom have “the gift of the gab – though their presentations are never like sales pitches”. Patent litigation head Moubray handles mechanical, electrical, chemical and life sciences cases with equal dexterity; so too Whittaker, who is always highly sought after as an opinion giver. For transactional briefs, interested parties should look to Dina Biagio and former Reckitt Benckiser deputy head of patents John McKnight – two commercially minded practitioners with an affinity for the finer points of a deal, thanks to their complementary preparation and prosecution skillsets.
Feedback for chemical and pharmaceutical patent litigator and prosecutor par excellence Rowan Joseph helps to explain the enduring popularity of Von Seidels. “Patent strategy is complex and in order to decide how best to protect an innovation, you have to fully understand your product, your markets and your business risk. Rowan always goes the extra mile to listen to his clients and to ask all the right questions so that he can formulate the best IP strategy. It feels like he owns the products and designs with you. It is always astounding how quickly he understands the technology and how effective he is at working with design engineers.” These traits of critical business thinking, technical nous and a personal approach are shared by many, creating a team that puts clients first in every sense. Inspiring them as group head is Erik van der Vyver, a prosecutor distinguished by extensive industry insight and cutting-edge international IP expertise. Recommended alongside him for prosecution, Gunther Roland, Bastiaan Koster, Ralph van Niekerk and Sandra Clelland all bring something special to the mix. Roland has a flair for using portfolio management techniques to tee up his clients in the most commercially advantageous market positions; Koster draws on his time as president of the International Federation of Intellectual Property Attorneys (FICPI) to provide his patrons with a truly global and strategic outlook; van Niekerk is a Stanford Law master’s graduate with deep knowledge of South African, US and international patent law; and Clelland has an intimate appreciation of the needs of and challenges faced by universities as they innovate in the biotechnology domain. Thanks to their collective efforts, the ensemble has become one of the largest Patent Cooperation Treaty filers and the third largest filer in South Africa. Von Seidels also maintains a well-formed transactions practice, which is home to eminent specialist Llewellyn du Toit, who previously served as an IP consultant with a leading technology transfer office. He loves getting into the nitty-gritty of complex innovations in the pharmaceutical and medical fields.
Webber Wentzel ascends to the silver tier in the IAM Patent 1000 for 2020; the firm is ideally placed to work with disruptive technologies, thanks to the seamlessly connected nature of its IP, technology, data and media offerings. Worthy of special praise is its commercial IP practice – one of the best in the country, thanks to the stewardship and specialisation of Bernadette Versfeld and Leanne Mostert, both of whom have been on a deal-making tear lately. In the financial services sector, Versfeld recently acted for African Rainbow Capital Financial Services on a share acquisition which necessitated the negotiation of numerous complex cross-border IP sale and licensing arrangements; the matter highlights Webber Wentzel’s authority on the subject of IP exchange control, as approval from the South African Reserve Bank was required to complete the transaction. Mostert’s recent work highlights include acting for chemicals group Omnia Holdings on an IP-driven deal with Oro Agri SECZ Limited, which has a sprawling global patent and trademark portfolio. She also advised The Carlyle Group on its acquisition of the entire issued share capital of Tessara Properties – a high-profile deal that was shortlisted for several awards. Other notable news from the past year includes the addition of Tim Ball as a consultant – a move which has considerably amped up the firm’s patent disputes and litigation practice.
Other recommended expertsHailed as “an exceptional patent specification draftsman”, metallurgical engineer Deon de Beer is a safe pair of hands for advanced materials science matters. He runs his own eponymous firm. Dessington IP founder Antony Dessington is a connoisseur of mining technology and chemical processes. He protects clients to the hilt thanks to his combined prosecution and litigation expertise.
- Russell Bagnall - Adams & Adams
- Tim Ball - Webber Wentzel
- Danie Dohmen - Adams & Adams
- Hugh Moubray - Spoor & Fisher
- Jonathan Whittaker - Spoor & Fisher
- Alexis Apostolidis - Adams & Adams
- Rowan Joseph - Von Seidels
- Dario Tanziani - Adams & Adams
- At van Rooy - KISCH IP
- Lance Abramson - Spoor & Fisher
- Ursula Baravalle - KISCH IP
- Elaine Bergenthuin - De Beer Attorneys
- Lodewyk Cilliers - Spoor & Fisher
- Sandra Clelland - Von Seidels
- David Cochrane - Spoor & Fisher
- Vanessa Crease - Brian Bacon Inc
- James Davies - Adams & Adams
- Deon De Beer - Deon de Beer & Assoc Inc
- Antony Dessington - Dessington IP
- Johnny Fiandeiro - Adams & Adams
- Rowan Forster - ENSafrica
- Janice Galvad - Adams & Adams
- Nicky Garnett - Adams & Adams
- David Gilson - Spoor & Fisher
- Chantal Hoffelner - Smit & Van Wyk Inc
- Mark Kemp - Spoor & Fisher
- Bastiaan Koster - Von Seidels
- Adelhart Krüger - KISCH IP
- Janusz Luterek - Hahn & Hahn Inc
- Colin MacKenzie - Adams & Adams
- Gunther Roland - Von Seidels
- Jaco Theunissen - KISCH IP
- Colin Truter - Brian Bacon Inc
- Érik van der Vyver - Von Seidels
- Louis van der Walt - Adams & Adams
- Joanne van Harmelen - ENSafrica
- Ralph van Niekerk - Von Seidels
- Wessel van Wyk - Smit & Van Wyk Inc
- Pieter Visagie - Adams & Adams
- Dina Biagio - Spoor & Fisher
- Llewellyn du Toit - Von Seidels
- John McKnight - Spoor & Fisher
- Leanne Mostert - Webber Wentzel
- Waldo Steyn - ENSafrica
- Jaco Theunissen - KISCH IP
- Bernadette Versfeld - Webber Wentzel