Protecting Intellectual Property during Lockdown

• South Africa

• Intellectual property

07-04-2020

On 24 March 2020, the Companies and Intellectual Property Commission’s IP Registry suspended all internal and external-facing operations due to the national lockdown. The Registry will only resume operations two weeks after the national lockdown is scheduled to end on 17 April 2020 namely, on 4 May 2020.

The closure of the Registry means that no new applications can be made for the registration of IP rights for patentable inventions, trade marks, industrial designs or registrable copyrights created during the lockdown. This is an extremely unfortunate consequence of the lockdown because COVID-19 has prompted an outpouring of creativity, in a number of industries and ranging from hands-free door openers to masks with impregnated antiviral coating, emergency ventilators, and testing and screening apps.

On the upside, of course, we note that there has also been an upsurge in the benevolent sharing of IP across various industries (and in some cases between trade competitors) to put up a concerted fight against COVID-19.

Without facilities to apply for registered IP rights to works created during this time, creators and collaborators may not be able to adequately benefit from the commercialisation of their IP after the pandemic. Until the Registry resumes operations, the following workarounds could be considered to safeguard IP rights pending registration:

Patentable Inventions – New and useful inventions are protected by patents, but once an invention is made public and is taken to market before applying for a patent protecting the invention, it ceases to qualify for patent protection. The exceptions to this are where the disclosure of the invention is restricted to: -

1) reasonable technical trials or experiments, and where

2) the invention was made public without the knowledge or consent of the applicant or patentee.

If the publication of an invention during the lockdown fits into one of these exceptions, it may still be eligible for patent protection on the re-opening of the IP offices. We would suggest however that if the invention does not fall into either of these categories, the patentee or applicant holds the invention close and waits for the Registry to re-open so that protection can be claimed before disclosure in any way whatsoever. If this is not possible, the patentee or applicant is then strongly advised to enter into a signed Non-Disclosure Agreement with the third party to whom the patentee or applicant absolutely needs to disclose the invention to.

Industrial Designs – The appearance of new and original designs is protected by the registration of functional or aesthetic designs. There is a grace period of up to 6 months to apply for a registered design so given this grace period, it is important for a designer to take steps to file a formal registered design application within the period of grace upon the Registry’s return to operational normalcy.

Trade marks – Symbols, logos, names, and other marks that identify the source of goods or services, distinguishing them from competing goods or services are protected by way of registered trade marks. There is no specific timeframe within which one must apply to register a trade mark but our recommendation is that, in ordinary circumstances, this be done as soon as one conceives of such a symbol, logo, name or other mark to ensure exclusive protection. Fortunately, in South Africa, the rights to a trade mark are based on a ‘first to use’ basis, i.e. if one uses a trade mark first, one will have the stronger rights to the trade mark. In using one’s ‘unregistered’ trade mark during this time, the use and promotion of the trade mark should be as extensive as possible to support a first use claim should this ever be questioned. Any use of the trade mark should also be accompanied with a clear claim to ownership over the trade mark, by using the ™ symbol against the trade mark in all instances. Until a formal trade mark application is filed at the Registry, the rights to the trade mark will only be those afforded by common-law. To secure registered trade mark rights, it will be crucial to make formal application for the trade mark upon the re-opening of the Registry.