Botswana adopts pre-grant opposition, not yet provided for in South Africa’s patent law

This week Afro-IP wrote that new regulations on Botswana’s Industrial Property Act will go into force on 1 September 2012. The Afro-IP blog, which outlines some of the key amendments with regards to the protection of intellectual property, is posted below. One key amendment is that Botswana will now allow for pre-grant oppositions of patents. Opposition can help improve the quality of patents being granted, but South Africa does not currently have systems in place to facilitate it.

South Africa’s Patents Act does not contain provisions for pre- or post-grant opposition of patents. Today, the only way to challenge a patent in South Africa is through lengthy and expensive court procedures. This massively limits who is able to challenged patents in the country. Most public interest groups, for instance, cannot afford to undertake lengthy court battles with pharmaceutical companies.

In TAC’s Fix the Patent Laws Campaign, we are calling on South Africa to adopt both pre- and post- grant opposition procedures, similar to those provided for in India’s legislation. Such a system will make challenging patents far less burdensome and expensive. Additionally, it allows the patent office to benefit from the inputs of various stake holders.

Under India’s opposition mechanism, a third party (including generic manufacturers, researchers, civil society organisations, and other interested persons and entities) can oppose a patent while the application is pending, and for one year after it is granted. This is done by submitting evidence to the patents office detailing why the patent should not be granted.

In India, activists have successfully opposed patent applications on new formulations of existing medicines, which are not allowed under Section 3(d) of the country’s Patents Act. Activists in India have used opposition procedures to successfully oppose a patent on nevirapine syrup, used to treat HIV positive infants and children and to prevent transmission of HIV to infants during breastfeeding, as well as, a patent on combination tablets of zidovudine and lamivudine, which is used in 1st line antiretroviral treatment of patients with renal failure or patients that are no longer susceptible to tenofovir.

Along with the adoption of opposition procedures, TAC is also calling for South Africa to adopt proper disclosure requirements in our IP legislation. Currently, in South Africa, and a number of other countries there is inadequate transparency around pending patent applications and patents granted. In order for opposition procedures to work effectively, the patent applications must include the name of the products, to which the patent application is related (this information must be submitted to the patent office as new products are launched), and must be published in a format that is easily accessible.

Internationally, South Africa has shown some willingness to move on this issue. In a proposal submitted by the South African delegation, on behalf of the African group, to WIPO’s Standing Committee on the Law of Patents[1] it was recommended that the WIPO secretariat commission, ‘an assessment of the benefits of mandatory disclosure of International Non-Proprietary Names (INNs) [generic names] in the abstract or title of patent applications’. The submission went on to state that, ‘This would enable an easier identification of the generic name of the medical product subject of the patent application’. We recommend that South Africa take heed of this proposal locally, with the adoption of proper disclosure requirements in our Patents Act.

With third parties being able to more readily identify patents with their end-point applications, such disclosure would not only improve the overall transparency of the patent system, but would also be crucial to ensuring the workability of opposition mechanisms in practice.



Afro-IP blog ‘Botswana’s new law in force this week’. Published on Monday, 27 August 2012


Afro-IP understands that Botswana has now signed into effect the Regulations regarding that country’s new Industrial Property Act 2010.  Publication of these Regulations is expected later this week and they will be in force from this Saturday, 1 September 2012.

The new Regulations are quite wide-ranging and cover many areas of intellectual property. In particular:

* Pre-grant oppositions may now be made in respect of published patent applications;
* Patent Cooperation Treaty (PCT) applications are at last possible (Botswana acceded to the PCT in 2003.
* Utility model applications are now possible.
* Industrial design protection may no longer be obtained for designs that are functional; *
* Collective marks and trade names are now protected, and special recognition is given to the status of well-known trade marks;
* New legal provisions have been introduced with regard to geographical indications, unfair competition, traditional knowledge and handicrafts.

Official fees required for intellectual property registration are being increased by 50% — presumably because the new law is 50% better than the old, says Afro Leo.

Source: newsletter of NJQ & Associates (Amman, Jordan)


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