Africa IP Highlights #3: Patents and reforms in IP policy, legislation and administration

This post is the third and final installment in the “Africa IP Highlights 2021 series” of posts highlighting some of the key developments in IP in Africa in 2021. The first 2 posts covered copyright and trade marks.

As previously stated, the series is the result of collaboration between myself and several IP practitioners and researchers across Africa: Caroline Wanjiru Muchiri (Centre for IP and IT Law, Strathmore University, Kenya); Ekene Chuks-Okeke (Banwo & Ighodalo, Nigeria); Marius Schneider and Nora Ho Tu Nam (IPvocate Africa, Mauritius); Ruth Mulenga Sinkala (PhD Candidate, University of Cape Town), Vanessa Ferguson, Sibongile Dee and Regardt van der Merwe (Von Seidels, South Africa).

This post is about patents and reforms in IP policy, legislation and administration.

January: It was noted that OAPI’s pilot project to test an online filing system that was earmarked to go live within 2021 became delayed due to issues with the software used for the project. Six local IP firms in the OAPI region were selected to pilot the project with the office’s intention to make online filing of applications mandatory should the trial phase be completed successfully. It’s now wait-and-see how it pans out…

In February, Namibian Business and Intellectual Property Authority (BIPA) advised that they are in the process of finalizing a new legal framework for copyright protection in Namibia, which would see the repeal of the Copyright and Neighbouring Rights Act 6 of 1994. From the working draft, the upcoming statute recognises the shortcomings of the current statute and will present a copyright statute that is fit for the digital age. This will without a doubt breathe a breath of fresh air into copyright protection in Namibia and is welcomed by creatives and corporates alike.

Namibia also took a leap in March with the coming into effect of the Electronic Transactions Act 4 of 2019. The Act aims to provide a general framework for the promotion of the use of electronic transactions and for consumer protection in electronic commerce.

March in South Africa, a matter, Groundprobe Pty Ltd and another v Reutech Mining (Pty) Ltd and others which started out as a patent infringement action ended up with a court judgment revoking the patent for a lack of inventive step. The appellants had alleged that the respondents were infringing their patent in a “Work Area Monitor” by making, using, offering for sale and selling work area monitors known as the MSR 060V and MSR 120V systems, both of which were mine slope monitoring systems comprising a radar and an interferometric processor mounted on the back of a light delivery vehicle. While admitting the above, the respondents counterclaimed for revocation of the patent on several grounds. The Commissioner of Patents, dismissed the appellants’ action and upheld the respondents’ counterclaim, finding that each of the claims of the patent were obvious to the person skilled in the art of the patent at the priority date. On appeal, the Supreme Court of Appeal upheld the judgment of the lower court and dismissed the appeal holding that the patent did not disclose any advance in radar technology and was lacked inventive step.

In April, a High Court in Gauteng, South Africa discharged an Anton Piller order earlier obtained by the applicant in Hudaco Trading (Pty) Ltd v Apex Superior Quality Parts (Pty) Ltd and others. The court held that the requirements of Anton Piller relief require an applicant to establish that it has prima facie established a cause of action against the respondents which it intended to pursue; that the respondents have in their possession documents or things which constituted vital evidence to substantiate the cause of action (but in respect of which the applicant cannot claim a real or personal right); and that there is a real and well-founded apprehension that this evidence might be hidden or destroyed or in some manner be spirited away by the time the case comes to trial or to the stage of discovery. While the applicant had satisfied the first requirement, it was unable to satisfy the court on the other two requirements. In the Court’s view, the order granted was wide in its ambit, and did not specify or identify exactly what information was requested. It entailed an impermissible blanket search for documents. The court concluded that the Anton Piller order sought and obtained was not justified by evidence of the existence of specific vital documents, and did not identify the documentation to be seized with the necessary specificity. The ex parte order was therefore discharged.

April, in Zambia saw the Ministry of Commerce Trade and Industry launching the Revised National Intellectual Property Policy. The new policy underscores the need for further legislative reform including a revision of the Copyright and Performance Rights Act, the Plant Breeders Act, the Merchandise Marks Act, and the Trademarks Act. Other notable highlights from the policy are the introduction of specific objectives including to promote innovation and generation of IP assets, strengthen and enable the business community to understand, protect and manage their IP and encourage respect and effective enforcement of IPRs.

In May, the Appeal Board for Plant Breeders Rights in South Africa held in Agricultural Research Council v Registrar of Plant Breeders’ Rights and another that the decision of the Registrar of Plant Breeders’ Right issuing a certificate of grant to the appellant for a South African plant breeder’s right under the registration number ZA 981943 for the Japanese plum variety under the denomination, SUN KISS was final and could not be varied or revoked in the absence of new information. The Registrar had, on application by the respondent, decided that the alteration of the SUN KISS denomination was necessary in the light of the respondent’s contention that the appellant’s use of SUN KISS was infringing of its trade mark, SUNKIST. The appeal board held that once it has been determined that the existence of the trade mark was not new information, the Registrar’s reliance on section 32(1)(d) of the Plant Breeders’ Rights Act was misplaced. According to section 32(1)(d), “the denomination approved in respect of a variety may be altered or supplemented by the registrar if information comes to light which, if discovered earlier, would in the opinion of the registrar have resulted in the refusal of such denomination".

May in Nigeria was also about plant breeders’ rights. Nigeria’s President Buhari passed the Plant Variety Protection Bill into law, introducing breeders’ rights, and establishing a Plant Variety Protection Office. The provisions of the Act mirror the International Convention for the Protection of New Varieties of Plants to a great extent, raising concerns about the potential impact on the new regime on small-scale farmers, as the Convention is used in developed countries like France.

June saw a serious push in favour of getting services from Zambia’s Patents and Companies Registration Agency (PACRA) online in efforts to curb the spread of COVID. PACRA is the executive agency which administers IP statutes and is mandated to register IPRs in Zambia.

In July, PACRA released and published its 2021 – 2026 Strategic Plan. In the same month, the agency ceased accepting any physical correspondence at the height of the third wave of the COVID pandemic in Zambia.

The mandatory annual recordal of all trade marks and copyrights for goods imported in Kenya is shaping up. In July, the Regulations governing this mandatory recordal - The Anti -Counterfeit (Amendment) Regulations, 2021 (Legal Notice no. 117) and the Anti -Counterfeit (Recordation) Regulations, 2021 (Legal Notice no. 118) - were jointly published. The application for the recordal must be made on a prescribed form and an annual recordal fee together with a separate fee for each class in which the trade mark is registered, is payable. The application is valid for one year from the date of approval of the application for recordation or for the time of validity of the intellectual property right, whichever is shorter. The recordal must be renewed at least 30 days prior to the expiry date. Once an IP right has been recorded, inspectors of the Anti-Counterfeit Authority have similar enforcement powers as customs officers with regard to imported counterfeit and trade mark infringing products. It is expected that once the online recordation system is rolled out, the mandatory recordal will become effective.

July was also quite momentous in South Africa as its Companies and Intellectual Property Commission (CIPC) became the first Patent Office in the world to award a patent that names an artificial intelligence as the inventor of a product. In the application by Dr Thaler, an artificial intelligence system (AI system), which has been described as a device for the autonomous bootstrapping of unified sentience (DABUS), was named as the inventor. This Katpost considered the significance of the the decision especially seeing as the applicant's previous applications in the UK, EPO and at the USPTO were unsuccessful because DABUS was named as inventor.

In August, national elections in Zambia resulted in a change in government. This brought along with it restructuring in Ministries and of particular consequence to the IP sector was the introduction of the Ministry of Science and technology and the retention of the Ministry of Trade Commerce and Industry.

In October, the international cooperation project on African IPRs and Innovation funded and directed by the EU (AfrIPI) together with the African Intellectual Property Organization (OAPI) held the first ever IP conference regrouping judges from OAPI member states. Held in Côte d’Ivoire, the aim of the conference was to discuss IP issues and compare different national solutions. The judges undertook to start a regional forum that will coordinate efforts to contribute to the AfrIPI case-law database and encourage peer support across national jurisdictions.

November saw the issuance of a categorical statement from Zambia’s newly established Ministry of Science and Technology indicating that there would be premium focus on science and technology to promote innovation – certainly good news for inventors and for IP in general. The coming year will make for interesting viewing with regard to what it holds from a policy implementation and legislative reform perspective.

And this Kat cannot round off this year’s Africa IP Highlights without mentioning 2 ongoing developments that she is watching closely and praying fervently that things turn out right: copyright reform in South Africa and the temporary TRIPS waiver as proposed by India and South Africa and supported by more than 100 countries (and counting). On the latter, this Kat joined over 100 academics to sign an open letter in support of the waiver. With the discovery of the Omicron variant of the Covid-19 virus, the attendant response of various countries and the glaring divide between nations that have access to vaccines and those that do not, one thinks it has become more than ever imperative that every country comes onboard with respect to the TRIPS waiver. As the open letter states, the waiver is “a necessary and proportionate legal measure towards the clearing of existing intellectual property barriers to scaling up of production of COVID-19 health technologies in a direct, consistent and effective fashion”. Here’s hoping that in 2022, the Africa IP Highlights will be the bearer of good news on these fronts.

… And with this, comes the end of Africa IP Highlights 2021. All the best to everyone over the holidays. Please keep safe and see you in 2022.