South Africa

The hot news in South Africa is the Intellectual Property Policy (Phase 1), which was presented to Parliament on 3 November 2020 by the deputy director general of the Department of Trade, Industry and Competition. Among other things, the policy aims to encourage innovation and empower domestic stakeholders to take advantage of the country’s IP system. The downside, however, is that although the progression of legislation has been outlined and a Draft Patents Amendment Bill has been drawn up, it still needs to be submitted to the cabinet for approval and there is no indication of when this is expected to take place. In the meantime, practitioners have a lot to sink their teeth into, courtesy of the country’s thriving life sciences and technology industries, as they keep a watchful eye out for further updates regarding the IP Policy.

Firms

  • Adams & Adams 
  • Spoor & Fisher
  • Von Seidels
  • ENSafrica
  • KISCH IP
  • Webber Wentzel
  • Brian Bacon Inc
  • De Beer Attorneys
  • Hahn & Hahn Inc
  • Smit & Van Wyk Inc

Adams & Adams 

A “well-organised and effective firm”, Adams & Adams “works efficiently and responds quickly and with clarity, while making complex matters easy to digest – collaborating with the team is an absolute pleasure”. The side has 22 associate offices, enviable geographical reach and the technical nous to support industry leaders and Fortune 500 companies on everything from protection to enforcement and strategic management of IP risks. With Russell Bagnall, Dario Tanziani, Alexis Apostolidis and Danie Dohmen leading the line, complex infringement action is a forte. “Russell’s technical skill is magnificent and his arguments are super-focused as a result”; his business network also facilitates strategic global partnerships, which brings about successful outcomes in the United States and Europe. Tanziani is in his element assisting multinational pharmaceutical companies and setting litigation benchmarks; while Apostolidis puts together structured and succinct pleadings for life sciences companies and automotive giants. “Dohmen’s expertise is invaluable,” enthuses one rights holder. “He is a conscientious legal adviser and a versatile lawyer who generates great value for our company. The way he handles matters is exemplary and always to a high standard.” On the non-contentious side, Janice Galvad and Wilhelm Prozesky co-head the overseas filing section, which effortlessly dispatches briefs from international clients thanks to its streamlined internal processes. Patent department chair Galvad is a vital sounding board to both colleagues and patrons; while Prozesky always looks for ways to enhance the customer experience. For foreign entities seeking to file impeccably drafted applications across the continent, the person to call is Nicky Garnett, who heads up the Africa patents section and leverages her extensive regional connections to obtain optimum protection. A safe pair of hands for multinationals in the nuclear energy and radiochemistry industries, Pieter Visagie partners up with clients to build future-proofed portfolio management strategies that consider their long-term business goals. “Proactive, efficient and personable”, Louis van der Walt interlaces his advice with insight gleaned from his previous position as a senior technical officer at a listed chemicals group; while seasoned mechanical engineer Colin MacKenzie is on hand for adroit, commercially focused portfolio management. With an affinity for electrical engineering, Johnny Fiandeiro, James Davies and Vishen Pillay have their fingers on the pulse of new technologies. Fiandeiro is a computer-implemented invention aficionado; while Davies has a flair for software creations. Pillay comes in for particular praise: “He is an excellent, if not the best, patent attorney in South Africa. Vishen’s advice is honest and business savvy, and he understands technically difficult inventions and translates them into world-class patent specifications.”

Brian Bacon Inc

Agile boutique Brian Bacon attracts a diverse range of patrons – including numerous generic drug manufacturers – from all over the world, thanks to the efficiency with which it secures and maintains IP rights. Its track record is nothing short of brilliant, with cast-iron patent protection procured for customers in over 140 jurisdictions. Further bolstering its capabilities, the group has forged a fruitful alliance with Themis Legal Advisors and Hayes Inc to boost its commercial law offering. Directors Vanessa Crease and Colin Truter form a dream team. Biotechnology ace Crease swiftly gets to grips with the nuances of complicated portfolios and dispenses on-point strategic guidance. Truter’s mechanical engineering nous shines through in the applications he drafts, while his industry experience gives him an intuitive grasp of customers’ inventions.

De Beer Attorneys

The IP department at full-service law firm De Beer Attorneys has a long list of high-flying clients that have been flourishing under the care of managing director Elaine Bergenthuin. The practice has been growing on both the contentious/non-contentious fronts, and a new online filing system is in development to accommodate independent applications and further refine its prosecution offering. Electronic engineer Bergenthuin brings valuable in-house insight to the table, having spent several years at a multinational information and communications technology company; coupled with a stint at a prominent London patent attorney firm, this guarantees a cosmopolitan, big-picture approach.

ENSafrica

“ENSafrica resolves technical and commercial issues in highly complex and very sensitive matters in the most sophisticated manner. The team is one of the most competent and highly recommended in the country.” The firm has worked tirelessly to build up a fully integrated network of offices throughout Africa, all of which provide the full range of IP services. In Durban, Rowan Forster leads by example. Combining technical knowledge with a hands-on attitude, he distils complex technologies into meticulous patent applications for mining and agricultural players such as Omnia Holding and devises shrewd enforcement strategies for Investec Bank. Over in Cape Town, Joanne van Harmelen heads the biotechnology team: “Diligent and efficient, Joanne has a unique drafting style and an incredible capacity to grasp new concepts and propose clear strategies on what is patentable and what is not.” One of ENSafrica’s strengths is the seamless collaboration between the patent team and the firm’s commercial IP unit and its two stars, Waldo Steyn and André Maré.  Steyn is lauded for his deep understanding of the business landscape, which he leverages to create added value for clients; while Maré has cultivated a diverse practice that encompasses domain name management and antitrust law, and brings a different dimension to the various agreements on which he advises.

Hahn & Hahn Inc

For 70 years, Hahn & Hahn Attorneys has been a prime destination for clear, straightforward, value-added IP services. The dynamic boutique is characterised by a robust prosecution offering, both nationally and internationally, but it also assists in litigation and has thus become a single point of contact for many prolific innovators. Janusz Luterek has carved out a niche in the food sector and spent several years in-house as a senior process engineer at APV International. His measured counsel is informed by this first-hand industry experience and inventors really appreciate his ability to get on their level.

KISCH IP

A fixture on the South African IP scene for more than 145 years, KISCH IP maintains a stellar reputation both locally and internationally for its potent prosecution and litigation capabilities. The side is lauded by peers as “a team of highly knowledgeable practitioners who are always collegial in negotiations and a joy to work with or against”. Under the command of chairman Adelhart Krüger, it has been busy locking down patents for chemical and engineering multinationals and defending the rights of clients of a similar calibre in tricky disputes. A lawyer and a patent attorney, executive committee chair At van Rooy utilises both qualifications to superb effect, particularly in the life sciences. The deep bench of talent at the firm also includes patent department head Ursula Baravalle and financial director Jaco Theunissen. Baravalle is trusted counsel to the country’s leading petrochemical company; while the “truly first-rate” Theunissen is “always on top of his game”.

Smit & Van Wyk Inc

Contemporary prosecution shop Smit & Van Wyk is dedicated to providing faultless IP support: “It stands out for its excellent service, accommodating practitioners and honest approach.” In this vein, the boutique has been implementing several new internal business intelligence systems that will further streamline its slick offering. Department head Chantal Hoffelner is a biotechnology guru who receives glowing praise from patrons: “What really sets Chantal apart, and what speeds up the process significantly, is her scientific background. She quickly understands technical aspects and outlines the legal processes clearly. I truly wish all my interactions could be like this – she is outstanding.” This is a trait she shares with co-founder and electrical engineer Wessel van Wyk, “a very intelligent and reliable business partner. His professional knowledge is very accurate and his personal approach to every case makes him stand out”.

Spoor & Fisher

Celebrating its centenary in 2020, IP set-up Spoor & Fisher delivers a wall-to-wall patent service throughout Africa and further afield, through a fine-spun web of offices and alliances. It continually invests in technology to pursue greater efficiencies and has established a cross-practice technology team to pilot new tools and systems across the firm. For innovative nanotechnology companies, Mark Kemp and Lance Abramson are the main attraction. Kemp “delivers outstanding work on patent prosecution matters and is an excellent attorney whom clients can rely on”; while Abramson knows how best to help businesses extract maximum value from their assets. David Gilson also draws on almost three decades of experience to get applications through to grant; and Lodewyk Cilliers is a repository of trust for inventors in the mechanical field. The team also has expertise in the life sciences, with David Cochrane and IAM Patent 1000 newcomer Tyron Grant both authorities on the plant breeders’ rights and biological fields more broadly. Cochrane “is rated highly for his pharmaceutical patent knowledge”, while Grant specialises in biotech inventions. On the equally impressive contentious front, the “personable” Jonathan Whittaker “is a driving force of the litigation practice alongside the evergreen and bright Hugh Moubray”. The pair often link up on matters across a multitude of industries and are familiar faces before the Supreme Court of Appeal, where they have chalked up numerous victories during their illustrious careers. The firm also brings out the big guns in transactions in the form of John McKnight and Dina Biagio. McKnight “is excellent and knows how to challenge his opponents”; and Biagio “is an extremely diligent professional with a very commercial and practical approach that incorporates the strategic vision of the whole company.”

Von Seidels

Ascending to the gold tier this year, Von Siedels is “an admirable practice with a team of top-notch, innovative and dynamic practitioners who have made waves on the market”. In 2020, the firm opened new offices in Nigeria and the Republic of Cameroon, and it remains a key contact for national and international clients seeking a springboard to the wider region. Leading the “energetic and hardworking” troop is consummate patent practitioner Érik van der Vyver: “He has excellent IP insight and builds excellent client relationships; he is someone you always hear good things about.” Between them, Bastiaan Koster, Ralph van Niekerk and Gunther Roland have a wealth of knowledge in the telecommunications and electrical industries. Koster recognises the value of intellectual assets and works to ensure that patrons have strong portfolios and even stronger market positions. van Niekerk is “a thought leader who takes real ownership of his work and provides one of the most professional yet cost-effective services on the market. He is highly qualified in both patent law and technology, which is not easy to find, and is everything one could ever want in a lawyer”. Head of Africa patents Roland meticulously drafts and timely files across multiple jurisdictions. In the life sciences, Llewellyn du Toit and Sandra Clelland are the names to note. Du Toit acquits himself with distinction when dealing with medical patents; while foresighted adviser Clelland is the point person for the nation’s universities; together they have a deep playbook to protect inventions and are keen problem solvers who dispense concise, coherent advice. On the contentious front, Rowan Joseph “is highly sought after and the name to note for litigation in the pharmaceutical space”. He marries industry insight with an affinity for global litigation.

Webber Wentzel

The IP department at commercial outfit Webber Wentzel has cemented its position in the upper echelons of the African legal scene over four decades and is a go-to for transactional briefs of all stripes. In 2017, it rolled out a legal incubation programme for start-ups, through which it provides up-to-the-minute advice on legal policy and innovation, procures solid patent protection and approaches the monetisation of IP assets from a holistic perspective. Its journey with pioneering South African outfit DataProphet began here and department head Leanne Mostert is now the AI company’s counsel of choice. In the words of one patron: “Leanne and her team are instrumental in ensuring that businesses are structured in the optimal way to ensure agility and scalability. Her skilful, out-of-the-box thinking makes her one of the leading commercial IP practitioners in South Africa”. Technology and media doyenne Bernadette Versfeld has also been reaping transactional triumphs. She has a rich background assisting multinationals and is a wise choice for both contentious and non-contentious instructions. Boosting the practice further with his contentious nous is former Brian Bacon lawyer Tim Ball. He shines in the life sciences and his sage counsel is in hot demand from pharmaceutical companies.

Other recommended experts

Trustworthy and versatile practitioner Deon De Beer relishes the opportunity to get to grips with cutting-edge technologies, specifically within the material sciences sector. The precision drafter can be found at eponymous firm Deon De Beer & Assoc Inc. Excelling on both sides of the contentious/non-contentious divide, Antony Dessington of Dessington IP is a mining engineer and chemical processes maven who melds comprehensive knowledge of IP law with a resolutely commercial outlook.

Individuals: litigation

  • 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

Individuals: prosecution

  • 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
  • Tyron Grant - 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
  • Vishen Pillay - Adams & Adams
  • Wilhelm Prozesky - 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

Individuals: transactions

  • Dina Biagio - Spoor & Fisher
  • Llewellyn du Toit - Von Seidels
  • André Maré - ENSafrica
  • John McKnight - Spoor & Fisher
  • Leanne Mostert - Webber Wentzel
  • Waldo Steyn - ENSafrica
  • Jaco Theunissen - KISCH IP
  • Joanne van Harmelen - ENSafrica
  • Bernadette Versfeld - Webber Wentzel