Thought leadership from our experts

Simply complicated

"Making the simple complicated is commonplace; making the complicated simple, awesomely simple, that's creativity"

Charles Mingus – jazz musician and composer

When I first entered the IP profession, patent law seemed wonderfully, naïvely, simple. You met with your client, discussed their latest ground-breaking invention (assuring you it had never been done before… ever…anywhere) - often accompanied by a few hand scribbled notes and kindergarten grade drawings - and turned out a masterpiece intelligible only to a select few fellow members of the club. As long as you bore in mind that a competitor's patent attorney and appointed counsel, burdened with a bagful of money and many more available hours than you had when you drafted the original application, would gleefully attack your masterpiece with all the finesse of a pit-bull, and that the judge, for whom a patent dispute was as exciting as watching paint dry, would have no hesitation in tearing your disclosure apart, all would be well. What could be simpler?

Roll on more than 20 years and life as a patent attorney seems anything but simple. A recent client engagement highlighted the complex nature of our profession in the 21st century. What started out simply rapidly deteriorated into a maze of legislation, regulation and bureaucratic red tape.

Having previously filed a priority application to a promising invention, I set about preparing a PCT application. Although nothing unusual about that, a chance comment from the client about assigning the rights to the priority application to a related offshore entity set the alarm bells ringing. The South African Reserve Bank, under the auspices of the Currency and Exchanges Act 9 of 1933 and related Regulations, strictly controls the movement of money and assets into and out of the country. In terms of the relevant Regulation 10(1)(c), no person may, without its prior approval, 'enter into any transaction whereby capital or any right to capital is directly or indirectly exported from [South Africa]'. What this means in terms of IP has been the subject of much debate, judicial decision and legislative amendment. Whilst there is some doubt as to whether a recent amendment to regulation 10 to bring IP under the umbrella of 'capital' is valid (the Supreme Court of Appeal having prior to that endorsed a lower court's decision that IP rights are not capital as contemplated in the regulation), we erred on the side of caution and set about restructuring the business to take into account exchange control and related tax issues.

The client had in the meantime been gearing up for manufacture and commercialisation, including inspections by the FDA providing a clean bill of health. A GMP certification in respect of the manufacturing facilities soon followed. However, as the raw materials are derived from cultivated plants from an indigenous biological resource (the priority application had been filed in a neighbouring country where the original plant materials had been obtained), we set about formally complying with the National Environmental Management: Biodiversity Act 10 of 2004 (NEMBA).

The company had a longstanding relationship with the indigenous community recognised as the curators of the traditional knowledge from which the invention had been derived, including public recognition of their involvement and compensation for the use of the knowledge. This was however formalised through an appropriate application to the relevant authority together with the necessary benefit-sharing and material transfer agreements. In due course, when the South African national phase application is filed, the client will have to lodge a form confirming that the invention is based on or derived from an indigenous biological resource and provide proof of its title or authority to make use thereof in terms of the amended patent legislation. Being a cultivated material, we also looked into the registration of plant breeders' rights. On the product side an application to the Medicines Control Council as a complimentary medicine in terms of the Medicines and Related Substances Control Act 101 of 1965 is pending, so the packaging and package insert, claims to its safety and efficacy, and its use had to be reviewed to ensure compliance with the recently amended Regulations under the Act as well as the Consumer Protection Act 68 of 2008. As some confirmatory data had been obtained from local Universities, we also had to confirm that these activities did not fall foul of the Intellectual Property Rights from Publicly Financed Research and Development Act 51 of 2008, aimed at providing benefit to the people of South Africa from publicly funded research and development. There was also the small matter of filing the necessary trademark applications. On top of that, foreign patent examination and prosecution still await us, as does possible examination in South Africa pursuant to the draft IP Policy 2013 document currently doing the rounds. It seems that we have moved beyond the debate on whether or not substantive examination will be introduced, with current discussions focussed on when and how it will be implemented.

One of the advantages of being in a firm such as Spoor & Fisher is that one has access to a vast array of internal and external expertise, providing a platform for addressing a range of IP and related issues, much of which was called upon in this engagement.

It was with great excitement that the client presented the finished product to me. I have sometimes been a little envious of trademark colleagues who have client products bearing well known household brands on display, when my own war chest included many whacky inventions that had never seen the light of day. So to see a product in final form that too may be a household brand one day was incredibly rewarding.

Arnold Palmer, seven times a major champion, once commented that 'golf is deceptively simple and endlessly complicated; it satisfies the soul and frustrates the intellect. It is at the same time rewarding and maddening - and it is without a doubt the greatest game mankind has ever invented'. Whilst I would not go so far as to claim patent law to be the greatest profession of all, it is without doubt a deceptively simple and yet endlessly complicated one. My experience is that it is at times incredibly maddening, yet most times rewarding. Now if only I had a better golf swing …