Sub Title Our Vision A world class innovation agency that supports and enables technological innovation to achieve socio-economic benefits for South Africa. Our Mission To deliver socio-economic value through technological innovation across the economy. IP STRATEGY Presented by: Cordelia Mashau

 Kind of product e.g. apparatus, process, formulation, mark, shape of an article, sound recording, recipe or plant variety.  Decide on the kind of protection suitable for the product e.g. patent, design, trade mark, copyright, PBR or trade secrets.  Commercialization strategy: − target market. − commercialization vehicle.  IP Strategy must align with commercialization strategy. Things to consider

Design  Often shape, colour, pattern and ornamentation are the most recognisable features and therefore convey commercial advantage.  May back up a patent or stand alone if competitive advantage lies in the looks of the product.

Trade marks  Companies come to rely on their names or names of products to sustain commercial endeavors.  People like to rely on a trusted brand.  Trade mark rights can survive after other forms of IP rights have expired giving the proprietor a competitive advantage.

Copyright  Inexpensive.  Only way to protect computer programs in South Africa.  Berne convention protects the work of the citizens of the member country.

Protection with a patent Advantages  Statutory protection against third parties;  20 years monopoly – limited competition in the market;  Institute legal proceedings against the infringers;  International patent applications − International Search Report (ISR) − International Preliminary Report on Patentability (IPRP) − Informed decision on whether or not to proceed with the patent protection

Protection with a patent cont… Disadvantages  The invention is disclosed to the public. There may be risk of reverse engineering.  Protection is limited to 20 years thereafter the invention becomes available to anybody to use.  Expensive (patent prosecution costs and maintenance fees).  No examination in the South African patent system. Do your homework before deciding that a patent is the best option.

Trade secrets Advantages  Cheap – there are no costs of protection.  Protection is by way of strong Non-Disclosure Agreements (NDA).  Life time protection unless the trade secret or confidential information is leaked to third parties.

Trade Secrets cont… Disadvantages  No statutory protection.  You cannot sue third parties for using your product. You can only go after a person who leaked the confidential information on grounds of breach of contract.  There is a risk of leakage of confidential information.

Trade Secrets cont…  Mitigating the risk of confidential information leakage: − Add strong confidentiality clauses in the employment contracts. −Limit the number of people who have access to the confidential information. −Limit the access to people who have interest in the business if possible.  It is easy to manage if the trade secret is based on a product than a method e.g. it is easy to manage if the trade secret is based on a spice than when it is based on the recipe.

Target market  Decide on the countries where the product is going to be commercialized and apply for protection in each country.  If your target market is SA only you will apply for a patent protection as follows:

Target market EPD (0 months) 12 months prosecute through to grant Prov Appl Complete application  Improve on your invention  Decide whether or not to proceed  Abandon application

Target market PCT (International patent application) EPD (0 months)12 months30 months ZA CN USA CA Prov ApplPCTPublicationNational ISRPhase IPRP

Commercialisation vehicle  Commercialise in-house – a trade secret may suffice for this model  License – a patent may work better than a trade secret. There is third party involvement and the management of the trade secret or confidential information may be compromised.  Sell/assign – the IP rights are transferred to the assignee or the purchaser. The risk is passed to a third party.

Freedom To Operate (FTO)  Make sure you have FTO when you enter the market.  An FTO analysis is used to determine whether using or commercialising a product can be done without infringing a valid IP right of others  IP rights are territorial – one would only infringe in countries where there is an IP protection for the particular product

Thank you!!!