The South African Government has just put out an urgent call for proposals (“CFP”) for the design, development, production, and procurement of ventilators, as part of the local effort to combat the Covid-19 pandemic. A copy of the CFP is available here.
Including other matters, the CFP requires respondents to address relevant intellectual property considerations in their responses. In particular, respondents are required to indicate the status of relevant intellectual property, and to inform on any restrictions for access to, or on the use of, such intellectual property.
In responding to the CFP, technically one would expect respondents to consider taking at least one of the following routes: (i) to reverse engineer an existing ventilator, (ii) to obtain a manufacturing licence for an existing ventilator, or (iii) to develop a new ventilator from scratch.
Intellectual property considerations would apply to each of these routes. Forms of intellectual property that would typically be relevant would include confidential information, trade secrets, know-how, patents, design registrations, and copyright. Trade marks may also be relevant.
In the sense of confidential information, trade secrets and know-how, in the context of routes (i) and (ii), the question of access would probably be a significant consideration. If access to such information is required by a respondent, it would probably need to be identified in responding to the CFP.
It is, however, noteworthy that, in respect of confidential information, trade secrets and know-how, the proprietor of the information would not be able to enforce any rights against a party with whom it has not contracted, except where there are nefarious acts at hand. While the proprietor may therefore hold rights in and to such information, its ability to enforce those rights may be limited.
It is therefore unlikely that respondents would need to identify the existence of relevant confidential information, trade secrets and know-how to which they do not propose to seek access. The relevant rights would probably also not be enforceable against them in the absence of a contract with the proprietor of the relevant information, or a nefarious act on the part of the respondent.
In all three routes, objectively enforceable rights such as those afforded by patent and registered design protection, would be particularly relevant. In this regard, respondents probably would only need to concern themselves with local rights, since patents and registered designs are territorial in nature. Unless foreign manufacture is foreseen, it is unlikely that foreign registered intellectual property rights would be relevant.
Looking at potential areas of risk: In the case of route (i), a reverse engineered product may be based on a product that is the subject of a South African patent or design registration, which may then be enforced against persons who reverse engineered the product, who manufacture it, and who commercially exploit it.
In the case of route (ii) a product licenced for local manufacture from one party may be the subject of a South African patent or design registration of another party, with the same potential results as in the case of route (i). Obtaining an indemnification from the licensor may be something to consider in this regard. Also relevant in respect of route (ii), would be to validate the existence of registered intellectual property rights under which a licensor would propose to grant a licence.
In the case of route (iii), a new product developed by one party may fall within the scope of the protection afforded by the South Africa patent or design registration of another party, again with the same potential results as in the case of route (i).
To assess the abovementioned risks from the perspective of patent and registered design protection, name searches and subject matter searches may be conducted at the intellectual property division of the Companies and Intellectual Property Commission (CIPC). Regrettably, the databases of that division are offline at the moment, due to the lockdown, and no searching is possible. Pointing out this fact when responding to the CFP would be advisable.
Adams & Adams has its own in-house database of some of the information that is contained in the CIPC databases, and we are therefore in a position readily to assist with such searches. Name searches are probably the most expeditious and conclusive searches to conduct. Subject matter searches are more comprehensive, but are regrettably extremely time consuming. Therefore, if the names of relevant developers and manufacturers are known, whether as possible proprietors or licensors, conducting name searches in their names is advised.
That said, it would not be possible to make any conclusive assessments of the relevance of any intellectual property registrations at least until the CIPC has reopened in May. For such assessments to be conducted, access to the official patent register and to some official documents is required, which is not possible at the moment. It may be worth pointing this out in responses to the CFP.
Out of interest, we point out that the number of entries in our in-house records containing the word “ventilator” in their title or abstract is just under 250. While some of these entries would relate to trade marks and others to non-respiratory ventilators, it is nonetheless clear that this field of technology has in the past received attention from inventors in South Africa.
In respect of copyright, it is worth noting that copyright cannot be enforced against the reproduction of a commercially available industrially manufactured reproduction of a three-dimensional article that has a utilitarian purpose. Copyright protection is therefore unlikely to be relevant to routes (i) and (iii), although it would depend on the actual facts of the matter. Caution is advised. In the case of route (ii), licensing under the copyright of design drawings and prototypes may be relevant, however. Our copyright team is available to assist with advice on such matters.
Also in respect of route (ii), it should be ensured that, from the perspective of the licensee, all relevant licences would be granted to it by the licensor and that there would be no outstanding rights that may still be enforced against the licensee by the licensor. Obtaining a guarantee or indemnification to this effect from the licensor may be advisable. There are also other aspects to the licensing route that would require specialist input from an intellectual property perspective. Our intellectual property licensing team is available to assist respondents choosing to follow this route.
Finally, in respect of route (iii), attention should be given to protect, where possible, intellectual property that emanates from fresh development work. While patent and registered design protection would not be granted for some months and would therefore possibly not be directly useful in the immediate future, one must bear in mind that a patent has a 20 year horizon and that there may still be future value in securing intellectual property protection at this time.
In respect of pursuing protection, it is very important to note that non-confidential disclosure of an invention or design may destroy the possibility to obtain registered intellectual property protection for it. It is therefore essential that confidentiality be maintained for as long as possible, and that steps be taken to secure priority rights by the filing of a patent or registered design application before any non-confidential disclosure is made. While CIPC is closed, such applications would need to be filed overseas. In this regard we have reached out to our agents in other countries for assistance, and our patent and registered design prosecution team is therefore ready to be of service.
Pieter Visagie & Vishen Pillay
ADAMS & ADAMS
6 April 2020