South Africa’s Department of Trade and Industry recently published its much-anticipated new draft IP policy. The salient structural reform it proposes is to introduce substantive search and examination procedures for patents; presently, applications are merely examined for formalities. The draft has been warmly welcomed by the legal community. With regard to litigation, economic uncertainty means that rights holders think very carefully before pursuing potentially costly infringement claims and cases tend to reach swift settlements.
Regional powerbroker Adams & Adams has four branches in South Africa – in Pretoria, Johannesburg, Cape Town and Durban – and 19 associate offices across the rest of Africa. Its wholesale coverage of the continent reflects a belief in the tremendous potential that exists in countries that many competitors regard as commercially unworkable. This is one of the firm’s attractive features; another is the proficiency of its lawyers across the contentious/non-contentious divide. Both traits have made Adams & Adams the destination of choice among multinationals wanting to establish, protect and monetise their IP rights in a slew of countries with only a single point of contact. Lately, the firm has also seen an upswing in outbound work, especially in the field of plant breeders’ rights; it is helping local rights holders to cash in on the rising demand for South African fruit through the signing of lucrative licensing contracts. Louis Van der Walt and Danie Dohmen are the men to go to for this. Having worked for four years in industry, Van der Walt has a feel for the way that business executives like reports to be written. “He’s highly skilled at drafting both local and foreign applications, with outstanding knowledge of procedures in South Africa as well as in the United States, before the European Patent Office and under the Patent Cooperation Treaty (PCT). He has a gift for explaining complex technical inventions in clear, understandable terms.” Dohmen is an ace in all things agriculture. His personable, engaging style has helped him to form fruitful, long-term relationships with rights holders big and small. Janice Galvad and Johnny Fiandeiro are prosecution pros. Galvad specialises in overseas filing; Fiandeiro is a telecoms guru who lives for the thrill of expanding the boundaries of technology. Firm chairman Dario Tanziani oversees the patent renewals department, which is responsible for approximately 30,000 renewals worldwide. He is at his best on the pharmaceutical side, like Alexis Apostolidis, to whom originators make a beeline for blockbuster litigation cases. Apostolidis’s track record is simply superb. Helming the litigation practice, Russell Bagnall is not one to pull a punch either; he has faced off against some of the most feared litigators in the world and emerged victorious.
Brian Bacon Inc
Fusing impeccable technical knowledge with a cosmopolitan, international outlook, Brian Bacon continues to win mandates from rights holders across the board. It has the wherewithal to establish, expand and safeguard patent portfolios with ease; applications are deftly drafted and enforcement strategies are thought out with an eye for challenges that could materialise in future. Colin Truter handles non-contentious matters, Tim Ball contentious ones. Truter gets to know his clients’ business so well that the C-suite regularly gets him on the phone and asks him the sort of questions normally fielded by in-house counsel. “Ball is a really fantastic litigator who gets outstanding results every time – if you need help on a serious matter, go to him.” In his illustrious career he has appeared before the High Court, the Court of the Commissioner of Patents, the Supreme Court of Appeal and the Constitutional Court – few practitioners can boast comparable experience in high-stakes pharmaceuticals cases.
Dessington & Associates Inc
Dessington & Associates' sweet spot is providing impeccable service at a competitive rate. Its customer-focused lawyers listen carefully to clients, analyse the options on the table and their long-term commercial ramifications, then craft a plan that will hit the target. Director Antony Dessington leads by example, providing round-the-clock attention on prosecution and litigation matters. He is at his best assisting on patents in the mining and chemical engineering spaces, but his perspicacious insights will put rights holders from all walks of life on a sure footing.
Established over a century ago, ENSafrica now has more than 600 practitioners spread across seven countries: Ghana, Mauritius, Namibia, Rwanda, South Africa, Tanzania and Uganda. Being a full-service firm, it can provide its IP counsel with invaluable commercial and tax law insights; rights holders overwhelmed by a panoply of problems can pick up the phone and have all of them dealt with expediently. Recent beneficiaries of this well-rounded service include AzarGen and Omnia Holdings; Joanne van Harmelen assists the former and Rowan Forster the latter. “Van Harmelen is extremely insightful, knowledgeable and portrays a genuine interest in new ideas. Her ability to immediately grasp complex concepts and convey them in the appropriate language is extremely impressive. It’s an absolute pleasure working with her.” The resourceful, pragmatic Forster prosecutes patent applications with an eye towards litigation to ensure that his clients are never wrong-footed. “He’s always willing to sit down with clients and discuss how to protect their intellectual property in the most commercially reasonable way. The quality of his work really is beyond reproach – he can’t be recommended strongly enough.”
Hahn & Hahn Inc
The “extremely personable” cadre at Hahn & Hahn remain a fixture in South Africa’s IP scene. The firm has a reputation for excellence in chemical engineering and looks at everything globally; with English, French, German and Korean-speaking patent attorneys in its ranks, it can offer translation services and is extremely popular among multinationals. “It’s a real pleasure working with or against the firm.” Janusz Luterek is routinely the first name on the team sheet. Having worked as a senior process engineer at APV, he understands the pressures inherent in the creative process; clients love his willingness to get down and dirty with the nitty-gritty technical details of their inventions.
The oldest IP boutique in South Africa, KISCH IP has an illustrious past and a well-established reputation for excellence, but it is not one to rest on its laurels. It continues to look far and wide for promising new practitioners for its life sciences, chemistry and engineering practices and to bolster its internal infrastructure with bespoke new software. Adelhart Krüger and Ursula Baravalle take the lead on prosecution matters. A past president of the South African Institute of Intellectual Property, as well as the national group of the International Association for the Protection of Intellectual Property, Krüger is a revered member of the IP community with many friends in foreign firms. Extremely popular among research institutions, Baravalle has been busy filing under the PCT on behalf of North West University, the University of the Free State and the University of Johannesburg. “She is unfailingly friendly, knowledgeable and capable and provides invaluable advice on the commercialisation of clients’ inventions.” At van Rooy picks up the reins when things turn contentious. He is a pharmaceuticals sage with complementary knowledge of plant breeders’ rights; his pleadings are never less than crisp, clear and compelling.
Spoor & Fisher
With 10 members ranked in the IAM Patent 1000 for 2018, Spoor & Fisher comprehensively tops the charts when it comes to individual excellence. The diversity of technical specialisms and courtroom experience in its patent practice is startling; interested pharmaceutical, medical engineering, mechanical engineering, mining and software companies can rest assured that they will be suitably catered for here. Leading the team from the Johannesburg office, Lance Abramson is a savvy strategist who thinks big; he is constantly chewing over ways in which his clients’ portfolios can be taken to a new level. Like him, David Gilson shows particular dexterity advising on the prosecution of patents in the electronics realm. The dedicated, enthusiastic and innovative Mark Kemp has earned unwavering loyalty from metallurgical rights holders, while heavy engineering clients continue to flock in their droves to Keith Brown. Having worked for five years as a mechanical engineer in the nuclear energy environment, Lodewyk Cilliers is another unarguable choice. “The years he spent working in the nuclear field come in exceptionally handy. His in-depth understanding of clients’ technologies is amazing. The sound advice he provides always enables them to make effective decisions.” Securing patents for potentially game-changing new technologies in the life sciences space is bread and butter for David Cochrane, while for high-value transactions, John McKnight and Dina Biagio are two names to remember. McKnight knows which buttons to push in touch-and-go negotiations; Biagio has a wealth of experience wrapping up technology transfer and collaboration agreements, as well as advising on investment structuring. Litigation firepower is provided by the market-leading duo of Hugh Moubray and Jonathan Whittaker. Moubray has a dazzling track record, which is unsurprising given that he’s one of the hardest-working lawyers out there; driven by a deep-seated desire to safeguard innovation, he does everything he can to vanquish his clients’ challengers. Moubray has a natural gift for landing on a winning strategy and the courage to stick to it when the temperature rises.
“Von Seidels’ ranks are made up of high-quality, extremely well-established practitioners.” Recently the firm has been demonstrating how sharp its commercial instincts are, assisting Stellenbosch University on the commercialisation of cutting-edge inventions in a range of technical fields; there are always some lawyers at the university advising researchers on how to obtain appropriate protection and a uniquely close cooperation has been forged with its technology transfer office, Innovus. Érik van der Vyver, Sandra Clelland and Ralph van Niekerk all pitch in on this. Captaining the patent practice, Van der Vyver has a background in electronic engineering and computer science, as well as a particular interest in new developments in mobile apps. Van Niekerk is another software guru, whose percipient, out-of-the-box counsel works like magic for start-ups getting ready to take on the world. Life sciences is the favoured province of the super-smart, ultra-polished Clelland. Bastiaan Koster is as good as anyone when it comes to conveying complex technical and legal concepts in simple language. While the firm is best known for its thriving prosecution practice, it also packs a punch in the courtroom thanks to heavyweight litigators such as Rowan Joseph. A persuasive narrative style and rock-solid reasoning set him apart from the crowd.
Guiding rights holders through complex negotiations concerning licensing, collaboration, distribution and technology transfer agreements is copybook terrain for the worldly wise, business-savvy IP team at Webber Wentzel. Thanks to close cooperation with practitioners in the full-service firm’s distinguished corporate departments, it has the wherewithal and resources to handle any transactional issue efficiently and effectively. The whip-smart Leanne Mostert recently had her hands full representing Omnia Group on its acquisition of shares in Umongo Petroleum, which required her to conduct a complex due diligence. Her teammate Bernadette Versfeld has her fair share of loyal fans too. “Clients really appreciate that Bernadette takes the time to get to know their business and keeps on top of changes and developments as and when they happen. Her commercial background means that they always receive advice that is strategic and commercially relevant. She thinks outside the box, has strong negotiating skills and is really personable and responsive.”
Other recommended expertsWessel van Wyk at Smit & Van Wyk has “excellent filing and drafting experience, especially in the electronics field. He’s also extremely capable at handling due diligences involving extensive novelty searches”.
- Russell Bagnall - Adams & Adams
- Tim Ball - Brian Bacon Inc
- 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
- Keith Brown - Spoor & Fisher
- Lodewyk Cilliers - Spoor & Fisher
- Sandra Clelland - Von Seidels
- David Cochrane - Spoor & Fisher
- Antony Dessington - Dessington & Associates Inc
- Johnny Fiandeiro - Adams & Adams
- Rowan Forster - ENSafrica
- Janice Galvad - Adams & Adams
- David Gilson - Spoor & Fisher
- Mark Kemp - Spoor & Fisher
- Bastiaan Koster - Von Seidels
- Adelhart Krüger - KISCH IP
- Janusz Luterek - Hahn & Hahn Inc
- 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
- Dina Biagio - Spoor & Fisher
- John McKnight - Spoor & Fisher
- Leanne Mostert - Webber Wentzel
- Bernadette Versfeld - Webber Wentzel