1. hobbies and interests
2. inventors and patents

Your guide to
intellectual property rights
in South Africa
Are you a designer? Do you know about design registration?
Are you an inventor? Do you know about patent registration?
Are you a product manufacturer? Do you know about product
liability? Are you an author, engineering draftsman or a computer
programmer? Do you know about copyright? Do you know the
processes to follow? Do you know who can support you? have
you considered the role played by standards in your design?
©
®
TM
PAT
DESIgN INSTITuTE
INTEllEcTuAl ProPErTY rIghTS
Inventors and designers whose business it is to
DISclAIMEr
ISBN 978-0-626-21033-5
generate intellectual property should acquaint themselves with the legal aspects of protecting what is
© Copyright reserved. No part of this publication
rightfully theirs
may be reproduced without the prior permission
of the SABS Design Institute.
Your guIDE To INTEllEcTuAl
ProPErTY rIghTS IN SouTh AfrIcA
Edited and published by the SABS Design Institute.
contributers:
— Intellectual property law information researched
This booklet is based on information available in
2008 but should not be treated as a substitute for
detailed advice from a professional legal advisor.
It is published without responsibility on the part of
the Design Institute, which cannot accept accountability for the consequences of anyone acting on
the information contained herein.
and revised by AJS Dunlop, SA Institute of Intellectual Property Law (SAIIPL)
— Standards and design submitted by Geoff Visser,
Standards South Africa, SABS
— The product development process submitted by
Neels Babst, CSIR
— Acknowledgement of input from CIPRO
SABS Design Institute:
— Adrienne Viljoen, Manager
— Esmé Kruger, Design Information
— Zenobia Norval, Awards Coordinator
— Bongani Ntombela, Design for Development
— Portia Mposula, Project Assistant
— Vuyiswa Daniel, Design Secretariat
SABS Design Institute
Tel: 012 428 6326
Private Bag X191
Fax: 012 428 6546
PRETORIA
E-mail: [email protected]
0001
www.designinstitute.org.za
Contents
2
IntRoDUCtIon
4
PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY
4
Copyright
6
Design registration
10
Patents
15
Trademarks
18
Counterfeit goods
19
Protection by other laws
19
Protection elsewhere
20
Licences, assignments and other agreements
21
Product liability
22
Valuation of intellectual property
22
Income tax implications
23
Intellectual property acts and treaties
24
tHe PRoDUCt DeVeLoPMent PRoCess
24
Enterprise creation
26
stAnDARDs AnD DesIGn
InseRt: UseFUL ADDResses FoR tHe InVentoR AnD DesIGneR
InseRt: DesIGn PRoteCtIon At A GLAnCe
1
IntRoDUCtIon
Designing a new product can be highly exciting, but the designer should recognise that
there are many pitfalls involved. What process do you have to follow, can someone take the
design that is rightfully yours, what standards regulate your design? All of these questions
will be addressed in this booklet. Just remember that this is only a guideline – it is always
better to discuss legal protection of your design or invention with a intellectual property
rights lawyer who will guide you in this regard.
What is the definition of intellectual property?
development of the design will derive the full commercial benefit of the design.
The following definition comes from the Web. The
general term for intangible property rights which are
Legal protection of intellectual property ensures
a result of intellectual effort. Patents, trademarks,
that exclusive rights are captured, which may be
designs and copyright are the main intellectual prop-
the only power which you can exert against power-
erty rights. — www.patent.gov.uk/design/glossary/
ful corporations. Conversely, they may be the prime
The use of intellectual property rights in the global
2
marketplace is a major facet of business today. The
leaders in exploiting this source of wealth are probably the USA and South Africans are fast learning
to enter the game.
Your inventive ideas, works and product designs,
whether aesthetic or functional in nature, constitute
value that you can sell or licence to powerful corporations. Even powerful corporations need to be
able to prevent unauthorised use and resist powerful competition.
Your new product design may entail features that
qualify for protection under one or more of the four
major fields of law that govern intellectual prop-
intellectual property. The value of intangible assets
erty in South Africa and abroad. The provisions of
should not be underestimated – but they must be
these may overlap to cover different aspects of the
protected by law. How often has the inventor not
same article or product and while there are differ-
made a cent, while those who followed him made a
ences of detail in foreign countries, the broad prin-
fortune from his invention? It is essential that legal
ciples are the same. Taken together, the different
protection be obtained to ensure that you, the crea-
laws and international agreements provide a system
tor of the design and the investor who finances
of design protection. In addition, your design may
also form the subject for protection against passing-
also be downloaded from the CIPRO website at
off or unlawful competition, in accordance with the
www.cipro.gov.za.
common law in some countries.
In this publication the different fields of law that
In South Africa, the intellectual property division of
you may use to protect your new product designs
CIPRO, the Companies and Intellectual Property
will be considered separately, in outline. While every
Registration Office, is responsible for the registra-
effort has been made to ensure that information is
tion of patents, trademarks, designs and copyright.
correct, no responsibility can be accepted for errors
The division keeps records of all patents, trade-
or their consequences. Also, it is not possible to
marks, designs and copyright that are lodged in
deal with the many laws fully and it is essential that
South Africa, including details of the owners/pro-
you consult an expert for details.
prietors. CIPRO came about after a merger between
the former South African Companies Registration
A short and simplified overview of the product devel-
Office (SACRO) and the South African Patents and
opment process has also been included, as well as
Trade Marks Office (SAPTO).
explanation of the role of standards in the design
process.
Researchers and inventors can do searches at
CIPRO’s Paper Based Disclosure Centre. Application forms for the different kinds of protection
are available at these offices or can be requested
from CIPRO by mail or telephone. These can
3
PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY
CoPYRIGHt
The Berne Copyright Convention covers most countries of the world, including South Africa and lays
down basic principles of copyright law that all member countries have to comply with. The discussion
that follows focuses on the law in South Africa, but
many aspects are also valid in foreign countries,
broadly speaking Berne extends your copyrights
internationally. However, make a point of consulting
an expert!
What does copyright protect?
In the case of your artistic works, a person who
makes a three-dimensional reproduction (eg in the
form of a usable article) of your two-dimensional
artistic work such as a drawing, infringes your copyright in that drawing. This may also include the
making of a two-dimensional reproduction of your
three-dimensional work.
It is important to remember that copyright does not
protect the underlying concepts of a design, only
the particular rendition of it, which you have reduced to material form (including in a computer).
Who is protected by copyright?
The following works, if they are original, qualify for
You, the author or creator of a copyright work will
copyright: Literary works, musical works, artistic
usually become the first owner of the copyright in
works, cinematograph films, sound recordings,
the work, unless you were in employment under a
broadcasts, programme-carrying signals, published
contract of service or apprenticeship, in which case
editions and computer programs.
your employer becomes the owner. (But see further
below “Who owns Copyright“.)
The category of copyright works most relevant for
4
product design will be artistic works. ‘Artistic work’
Copyright can be assigned (ie transferred) or li-
is defined to include drawings (including drawings
censed, but an assignment and an exclusive licence
of a technical nature or any diagram, map chart or
have to be in writing.
plan), paintings, sculptures, engravings and photographs, all irrespective of their artistic quality; works
How does copyright protect you?
of architecture; and works of craftsmanship (including works of artistic craftsmanship as well as works
Copyright arises automatically when a work is made,
of craftsmanship of a technical nature). ‘Drawings’
in all Berne Convention countries.
would thus include engineering and industrial design drawings. The concept ‘works of craftsman-
Copyright protection affords you, the copyright own-
ship’ would include three-dimensional articles, for
er the right, generally speaking, to prevent others
example prototypes and models prepared in the
from making a reproduction (or copy) of the copy-
course of design work.
right work, from publishing the work, and, in some
instances, from offering it for hire by way of trade.
Copying these does not infringe copyright in the
A person who carries out any of these acts without
original work, but taking legal advice beforehand
your authority commits an act of direct infringement
is well advisable because this area of copyright law
of your copyright in the work. To constitute a direct
is controversial and very complex.
infringement of copyright, actual copying must have
taken place, and the reproduction must be substan-
A general exception is research or private study or
tially similar to the original work.
personal use and fair review or criticism or reporting
of current events.
The protection afforded you also extends to socalled acts of indirect infringement, which will occur
Who owns the copyright?
where a person deals in certain ways with copies of
a copyright work, knowing that they are infringing
As mentioned above, the author is the owner, unless
copies. These ways include importing, selling or
employed in a contract of service or apprenticeship.
dealing in the infringing copies or acquiring a computer program.
Where the employer is the proprietor of a newspaper or magazine, the proprietor owns copyright
Copyright law protects the reputation and identity
only for purposes of publication.
of the author, by giving a right of action against
distortion or mutilation of the work in a way which
For works created between January 1, 1979 and
is to the detriment of the honour or reputation of
May 23, 1980, these exceptions do not apply in
the author. This applies, even if the ownership of the
South Africa, unless the work was done for the state
copyright resides in another person or company.
or an international organisation.
This protection of the author can not be taken from
him or her.
Another exception is where certain copyright works
(namely photographs, painted or drawn portraits,
Are there any exceptions to copyright protection?
films, sound recordings and gravures) are made on
commission and on payment of money, in which
In the usual course of events, it will also be an in-
case the person who commissioned the work be-
fringement of the copyright in a work if a reproduc-
comes the owner of the copyright.
tion of another reproduction of the work is made.
However, important exceptions apply to spare parts
The effect of these exceptions as to ownership
throughout the world and in South Africa three-
can be changed by agreement in writing between
dimensional products placed in the market by
the parties concerned, i.e. assignment.
authority of the copyright owner and which are
primarily utilitarian and have been made by an
industrial process, are excluded from copyright.
5
How long does copyright protect you?
specialist lawyer. The few non-Berne Convention
countries may well have copyright law available
Copyright is immediate and for artistic works (ex-
to you, but you would have to investigate.
cept for photographs), copyright endures for the
entire lifetime of the author and for a period of 50
Tips and comments on copyright protection
years after his death. In the case of photographs
(also cine films and computer programs), the period
If you forget to register your design, then copyright
of copyright is 50 years after the work is first law-
may save the day if you habitually keep all original
fully made available to the public.
drawings, date them and have them witnessed
and have the copyright symbol and notice on all
What will copyright protection cost you?
drawings.
There is no registration fee, since copyright arises
It is preferable to use the copyright warning notice.
automatically by law, this is a ground principle of
The abbreviated form is the year of first publication
the Berne Convention. However, some countries
of the work followed by the encircled ©, and the
(eg USA) allow an optional registration, to help prove
name of the copyright owner. Very often the words
and enforce your copyright there. Only film copy-
“ALL RIGHTS RESERVED” are added to the notice
right can be registered in South Africa.
(this is actually required in most South American
countries).
What are the registration requirements for
copyright?
of the contract provide in writing that you, as the
No prior registration or any other formality is required (besides preferably having the date, your
6
When subcontracting work, check that the terms
commissioner become the copyright owner or are
acknowledged as the existing owner.
name and a copyright statement (eg Copyright
reserved) witnessed on your original copy). You
can have that copy authenticated by a notary or
commissioner of oaths. As mentioned optional
registration is available in some countries.
What countries are covered by copyright
protection?
DesIGn ReGIstRAtIon
Design law varies somewhat from country to country, but the key feature common to all, is that registration is essential before you have the right and
the design must be new when you register. The
Paris Convention allows you to register in further
countries up to 6 months after the basic registra-
The list of Berne Convention countries is obtain-
tion in your home country (or a first registration
able from the Government Printer, or consult a
anywhere).
What does design registration protect?
of shape or configuration or pattern or ornamentation (or any combination of these), which appeal
Whereas original and innovative design may be
to and are judged by the eye, as shown in drawings
protected under the copyright, patent and trademark
or photographs of the registration.
laws, a specialised law for design protection is
discussed here.
A functional design registration protects the features of an article, which are necessitated by the
Aesthetic and functional design
Although good design usually inherently blends both
aesthetic (eye appeal) design and functional (eg
ergonomic) design in the product, the law in South
Africa grants separate protection and different protection periods to aesthetic and functional features
of designs and requires different conditions to be
met before giving protection (see below). In some
foreign countries functional design cannot be protected by a specialised law for design, but where
it is, it goes under different names, such as “gebrauchsmuster” – Germany, “utility model” – France,
function which the article has to perform. These
features are pattern, shape and configuration.
Integrated circuit topography and mask works are
included in the category of functional designs in
South Africa. In a number of foreign countries (eg
USA and Japan) there is specialised integrated
circuit and mask work legislation. An integrated
circuit is defined as an article in a final or an intermediate form containing electrical, electromagnetic
or optical elements and circuitry, which is capable
of performing an electrical or an optical function, and
in which at least part of the electrical, electromagnetic or optical elements and circuitry are integrally
“Petty patent” – formerly in Australia, now substituted
formed, in accordance with a predetermined topog-
by a new law for “minor inventions”. Aesthetic design
raphy in a semi-conductor material. An integrated
is protected almost in all countries and in some
circuit topography consists of the pattern, shape of
the distinction between functional and aesthetic
configuration of the three-dimensional disposition
design is not so strictly drawn. Expert advice will be
of the electrical, electromagnetic or optical elements
essential. In South Africa the register of designs has
and circuitry in an integrated circuit.
two parts, part A for protection of aesthetic features
of designs and part B for protection of functional
A mask work consists of a pattern of an image how-
features of designs. Many designs are accordingly
ever fixed or encoded, having or representing at
registered in both parts A and B. Designs registered
least part of an integrated circuit.
before 1 May 1995 are only in part A because part
B was only introduced after this date.
The categories of registered design protection
Who is protected by design registration?
You, the owner of a registered design may apply
for the monopoly right, or a person or company
An aesthetic design registration protects the fea-
for whom you made it in the course and scope of
tures of appearance of an article, ie the features
your employment, or to whom you assign it.
7
How does design registration protect you?
The state of the art comprises all matter available
to the public (whether in South Africa or elsewhere)
You have a monopoly right to prevent others from
by written description, by use or in any other way
making, importing, using or disposing of in South
as well as matter from prior pending or convention
Africa an article which falls within the class in which
applications.
a design is registered, incorporating the design or
a design not substantially different. It is not neces-
Both aesthetic and functional features of a single
sary that the owner of the design prove that the
design applied to an article may be protected by
infringer had actually copied his design.
separate design registrations.
You must enforce your right through an appropriate
South African Court. An attorney, patent attorney or
agent or advocate can represent you. In foreign
countries the foreign courts and lawyers must be
used.
Relief can be by way of an interdict, either damages
or a reasonable royalty in lieu of damages and surrender of any infringing product or article or of any
Are there any exceptions to design registration?
An article which is in the nature of a spare part for
machine, vehicle or equipment shall not be the subject of a valid registration for a functional design
but it may be the subject of an aesthetic design.
As mentioned, the rules for design law in foreign
countries are different and complex.
product of which the infringing product forms an
inseparable part.
What are the conditions for a valid design
8
registration?
An aesthetic design has to be new and original
whereas a functional design has to be new and not
Design protection is not for inventions
Broadly speaking, a patent protects an invention in
many embodiments, which incorporate the underlying invention. Functional and/or aesthetic design
is applied to a commercially suitable embodiment
in order to bring it to market acceptance.
commonplace in the art in question. A design is
new if it does not form part of the state of the art
How long does design registration protect you?
immediately before the date of application for the
registration or the release date, whichever is the
The maximum duration in South Africa of protection
earlier. Where the release date is the earlier, the
for an aesthetic design is fifteen (15) years where-
application for the registration thereof must be
as the duration for a functional design is ten (10)
lodged within six months of the release date. The
years from registration or from the release date,
release date is the date on which the design was
whichever is the earlier. Annual renewal fees must
first made available to the public with the consent
be paid after the third year. The fees may be
of the proprietor or his predecessor.
viewed on the CIPRO website at www.cipro.gov.za.
Provision is made for the restoration of lapsed
design registrations where the lapsing was uninten-
What countries are covered by design
registration protection?
tional and where no undue delay has occurred in
the making of the application for restoration.
A South African registered design has effect only in
the territorial area of South Africa. To obtain pro-
Abuse of design rights
Compulsory licences are possible in the case of
abuse of rights, eg. failing to make the design available adequately and to a commercial extent, failing
to meet the demand for the design to an adequate
extent and on reasonable terms and failing to grant
licences on reasonable terms, where they should
be granted in the public interest.
What will design registration protection cost you?
The South African costs are given below. Consult
an IP lawyer for foreign costs, they are generally
much higher than for South African rights.
A R240 revenue stamp is all that you need pay if
you file the application yourself. A patent attorney
might charge R4 000 to do it for you. If he has to do
drawings that would be extra and drafting definitive
tection in other countries applications have to be
filed in such countries. A South African application
can serve as a basis to claim convention priority
rights in most other countries, provided a corresponding application is filed in that other country
within six months of the South African application.
A community design covers 25 European countries.
Tips and comments on design registration
protection
A design must be registered in one or more specified classes listed in the Designs Classification of
Goods. The protection afforded by the registration
is restricted to the nominated class or classes in
which the design has been registered.
Classification lists are available from the Designs
Registration Office at CIPRO in Pretoria (see address list inserted in this Guide .
and explanatory statements and an abstract requires
It is probably safer to keep new designs confiden-
a further fee. The first renewal fee is R120 and the
tial until a registration application has been filed,
last for functional designs is R110, for aesthetic
however, if you wish to use the 6 months grace
designs R149. A patent attorney would charge
period it would be wise to discuss this with a patent
about R725 for maintaining a reminder system for
attorney. Employees and others should be required
you and renewing the registration for you (2008
to sign confidentiality undertakings.
fees). The attorney’s fees include not only professional advice but also the creation of a file, prepara-
Once your design is registered, it should be marked
tion of documents and drawings and the running of
with the words “registered design” and the registra-
a maintenance and reminder system for timeous
tion number; otherwise you may find that infringe-
renewal of registration fees.
ment damages are not recoverable. It is a criminal
9
offence to indicate that a design is registered if it
the Registrar of Designs at CIPRO or can be down-
is not.
loaded from their website www.cipro.gov.za
When you are commissioned to create a design,
Representations of the design must be filed on A4
ensure that the term of the contract correctly re-
size paper. It can be drawings or photographs. Draw-
flects your intentions and your rights to the design.
ings are preferred as far as possible, without explanations or side scripts. The applicant may indicate
which view is shown, for example front view, side
Basic procedure for design registration
view, etc. Photographs must be studio photographs.
No background details or person must be in the pho-
A private individual or a company may apply. The
tograph. It must only show the object that needs
applicant may file the registration him or herself or
to be protected. If other objects need to be in the
by making use of the services of a patent attorney
picture for indication purposes, a disclaimer must
firm. It may help you to have a look at the Patent
be written in the Explanatory Statement to disclaim
Journal before you fill in your application forms.
protection of that part. There may be more than one
The Patent Journal is a monthly publication with bib-
view on a page, but seven identical clear copies
liographic information, accompanied by a written
must be submitted of every page, for example if
note and drawings or images concerning registra-
there are three different pages – 3 x 7 copies. On
tion of trademarks, patents and designs. You can
one of those pages, one picture that shows the
order the Patent Journal from Government Print-
object the best, must be attached to D8 “for pub-
ing Works, Bosman Street, P/Bag X85, Pretoria
lication” to be advertised in the Patent Journal.
0001.
If the applicant wishes to register the design in other
The basic procedures to register are as follows:
10
countries as well, he/she needs to do so within six
months from the filing of the South African filing by
Step 1: It is advisable to do a novelty search at the
making use of the services of a patent attorney firm.
search facility at CIPRO’s Paper Based Disclosure
Centre. The cost is R4 and it is a search that the
applicant can do him/herself or appoint a patent attorney to do it on their behalf at extra costs.
PAtents
}
What does a patent protect?
A patent refers to a new and non-obvious invention,
Step 2: To apply for registration, a set of forms must
which is suitable to be applied in trade or industry or
be completed consisting of D1 (dupl.), D2 (dupl.),
agriculture. An invention can be a new product, proc-
D3, D6 (dupl.) and D8 (dupl.). The registration fee
ess, device or the like, or an improvement on an
is R240. Application forms can be obtained from
existing product, process, device or the like.
Who is protected by a patent?
How long does a patent protect you?
The applicant for a patent must be the rightful owner
A provisional application is available in South Africa
of the invention; eg he must be the inventor, the
and a few other countries, including UK and USA,
assignee of the inventor or the inventor’s employer
and obtains provisional protection for a period of
if the invention was made in the course and scope
twelve months in all Paris Convention countries
of employment.
(about 154); this can be followed by a complete
application in selected countries (before the expiry
How does a patent protect you?
of the twelve-month period), which provides protection for generally 20 years from the date of filing
A patent is a monopoly right conferred by the State
the complete application, renewable usually from
for a limited period of time. Hence most commonly
the 4th year, in each country. However, increasingly
a patent is a national right limited to the nation con-
South Africans are choosing rather to obtain foreign
cerned, but there are a few regional patents, one
patent rights by entering the PCT (Patent Co-oper-
for Europe, one for “English-speaking” African countries and one for “French-speaking” African countries. A patent for “Europe” now extends to numerous
East European and Mediterranean countries as
well.
ation Treaty) system, for which see below.
What will patent protection cost you?
If you file the provisional patent application in South
A patent gives you the right to exclude others from
Africa yourself, a R60 revenue stamp will suffice.
making, using, exercising or disposing of your in-
If the provisional patent is filed by a professional
vention, so that you can enjoy the whole profit and
(which is preferable, to avoid subsequent invalidity
advantage accruing from the invention for the dura-
or complications arising from inadequate descrip-
tion of the patent.
tion or too narrow a definition of the invention), the
fee might be anything between about R5 000 and
Are there any exceptions to patent protection?
Certain categories of inventions excluded from pat-
R7 000 or more, depending on the complexity of the
invention.
ent protection in most countries are the traditional
The complete patent filing in South Africa, which
copyright works or any aesthetic creations; a meth-
must be done by a patent attorney or patent agent,
od, scheme or rule of doing business or playing a
will cost between R7 000 and R10 000 or more,
game; a scientific theory or mathematical method;
including official fees. The renewal fee, payable
the presentation of information; a computer program,
annually from the 3rd year onwards, is on a sliding
and methods of medical treatment. Sometimes ex-
scale from R130 to R206 for official fees and
cluded categories can be indirectly protected by mo-
R725 for a patent attorney’s fee. As in the case of
nopolising the technology necessary for them.
design registration, the patent attorney’s fee will
11
include professional advice, preparation of specifi-
12 months to 30 months, internationally, by filing a
cation drawings and formal papers and the imple-
PCT (Patent Co-operation Treaty) patent applica-
mentation of a system to remind you and making
tion. Rights are provisionally reserved in 135 coun-
the payments.
tries and the benefit of an international search
and preliminary examination is included. The ad-
What are the registration requirements for a
patent?
vantages include deferring the costs of filing in
foreign countries, an early reliable and impartial
indication of validity (at the 16th –17th month), with
You, the inventor, or your patent attorney can apply
opportunity to amend if it is necessary, which can
to the Registrar of Patents at CIPRO for a patent.
form a basis for confidence by investors. At the end
Application for a patent can be made by way of a
of the PCT procedure the patent application will be
provisional application, to obtain provisional protec-
in a better condition to go through the examination
tion, followed by a complete application (this must
successfully in each country in which you finally
be done by a patent agent or a patent attorney).
patent.
Alternatively, a complete patent application may be
Tips and comments on patent protection
filed in the first instance. (See address list, inserted
in this Guide).
The term “new” means that the invention or information about the invention should not have been
12
What countries are covered by patent protection?
available to the public anywhere in the world. Ac-
A South African patent has effect only in the territo-
application be filed before your invention is made
rial area of South Africa. If you require protection in
known to members of the public.
cordingly, it is of vital importance that your patent
other countries, you must file separate applications
in such countries. An exception is the regional
You should neither discuss your invention nor show
patent for Europe and regional patents in Africa.
it to anyone who is not legally bound, by contract
or by the nature of your relationship with them, to
Your South African patent application can serve
keep it confidential. Disclosure of your design or
as a basis for claiming so-called convention priority
invention to a professional advisor, eg a patent
in respect of foreign applications in the majority of
attorney, is not a premature disclosure because he
other countries. You must file such foreign appli-
owes you a legal duty of confidentiality, and what
cations within twelve months of your first South
you tell him will be privileged in law.
African application.
The filing of a provisional application in the first
An important alternative, used increasingly since
instance has several advantages, including that
South Africa joined the PCT in May 1999, is to
it can be filed relatively quickly (since only a pro-
extend the period of provisional protection from
visional specification is required to be filed), and
it secures a filing date yet affords a twelve-month
The provisional patent application secures the date
period during which the novelty, technical merit and
and a right to the invention but does not guarantee
commercial prospects can be further investigated,
that your claim is legitimate. No search is done by
before the application is completed.
the Registrar of Patents in South Africa to ensure
that your idea is unique and there could well be
This twelve-month period may be far too short for
another similar invention, either local or overseas.
developing the invention into a product. Hence the
The onus is entirely on you, the applicant for the
value of the PCT procedure mentioned above,
patent, to look into this question. This means that
which gives 30 months. In addition, it may be advan-
patents may be granted in South Africa for inven-
tageous not to file a patent immediately, provided
tions that are not new and that may even have been
that the novelty of the invention will not be adverse-
patented. It is worth the additional time and costs
ly affected by the delay. Limited protection during
the product’s development and testing phase can
be achieved in other ways, eg a confidentiality or
non-disclosure agreement, before a patent application is filed (see Licences, Assignments and other
Agreements, page 20). Once the patent is filed,
the clock starts ticking and you have limited time
before deciding whether or not to file a complete
patent and, if so, in which countries.
If your provisional patent protection time has expired, it may be possible to re-file your application.
to conduct an international search to ensure the
uniqueness of your invention even before filing the
provisional – also this could save you from re-inventing the wheel. South Africans now have good access
via Internet, to international patent databases (see
the addresses under the heading “Internet Searching Addresses”).
In most overseas countries, such as the USA and
Europe, intensive worldwide patent searches are
carried out before a patent is issued, thus ensuring
that the invention is truly unique. This is where the
PCT procedure is helpful, as it includes the pre-
This, however, carries the disadvantage that you
liminary search, which is good insurance against
lose your original file date, which can have serious
adverse results later.
consequences. Do not take this decision lightly and
preferably seek professional advice.
Five years after the date of application for your patent in South Africa, any person can obtain details of
In some (rare) instances, it may be better not to pat-
search results in any foreign patent applications you
ent your discovery or invention but to continue to
may have filed. Publication of granted foreign pat-
keep it secret, eg as in the case of the formula for
ents usually include details of prior art that was con-
Coca-Cola. This enables you to have monopoly
sidered before the grant to you.
rights well beyond the 20 years of cover granted by
the patent! This option is viable only if it will not
Searches in the markets where you intend to sell,
be possible for outsiders to analyse and deter-
are necessary if you want to be sure that in manufac-
mine your invention, or for insiders to reveal it.
turing you do not infringe someone else’s patent.
13
It is quite possible to find that a product is protected
lodged at CIPRO. The protection of the patent will
in some countries and not in others.
depend on the wording used in the description.
Inventions and supporting literature should all be
The provisional patent will be valid for a period of
marked with “patent applied for” or “patent”, with
12 months. In these 12 months, the patent may be
the relevant patent number, to ensure that infringe-
manufactured and marketed. Any time during these
ment damages can be recovered. Falsely claiming
12 months, the final patent may be filed when the
that patent rights exist is a criminal offence.
applicant is confident that the invention is successful.
Basic procedure for patent registration
Step 1: It is advisable to do a ‘novelty search’ at the
search facility at CIPRO’s Paper Based Disclosure
Centre to make sure that the invention is truly new
and will not infringe on someone else’s existing patent rights. It is a manual search that the applicant
can do him or herself and costs R4. A patent attorney may also be appointed to do this on the applicant’s behalf. It is also advisable to do searches on
other countries’ patent websites to ensure as far possible, that the invention is truly new. If no similar
invention is found, the applicant can take the next
step, which is to register the invention.
}
14
A private individual or a company may apply for a
patent. The inventor/s can only be indicated as natural persons and not a company. If a company is the
applicant or if the applicants differ from the inventor/s, an assignment of invention document from
the inventor to the applicant must be filed with the
application. It is more advantageous to apply in a
private capacity – especially if it is planned to file
the patent internationally Patent Cooperation Treaty
System (PCT).
A provisional patent may be extended up to three
months, but a priority claim in a foreign country must
be within 12 months. The cost for extension is R50
per month. Alternatively, the applicant may apply
for post-dating, but the original protection date will
be forfeited (the application date is “shifted” on as
Step 2: The applicant can apply for provisional pat-
if the application was filed on a later date). One may
ent rights by completing a set of application forms,
post-date up to six months. The cost is R50.
}
which consist of form P1 (dupl.), P2 (dupl.), P3 and
P6. The registration fee is R60. A detailed, broad
description of the invention must be prepared on
separate A4 size paper that must be attached to
Step 3: The final (complete) patent can be filed in
the application forms. Neat drawings in black ink (on
South Africa only or with the PCT international filing
A4 paper) may also be included to help with the
system.
description of the invention. The wording of the
description is very important and the description
The SA Patent Act requires the signature of a regis-
may not be altered or added to after it has been
tered patent attorney on the specification. Through
the PCT system, an applicant may apply him/her-
for goods, or any combination of these. A trademark
self by doing an international reservation in mem-
should be capable of distinguishing your goods or
ber countries of PCT. If an applicant applies in a
services because of its inherent nature or as a result
private capacity, the applicant will receive a huge
of use.
discount on the reservation fee. The reservation
fee is roughly ± R6000 (including the discount). Later
A certification mark must be capable of distinguish-
when it reaches the national phase (where the
ing goods and services in respect of kind, quality,
application is filed in the different countries), fees
quantity, intended purpose, value, geographical
are paid as set by each country, around R 35 000
origin or other characteristics of the goods or servic-
average.
es, or the mode or time of production of the goods or
of rendering of the services.
After the application has been accepted and granted
(advertised in the Patent Journal), the patent needs
A collective mark is one capable of distinguishing
to be renewed annually from the third year to keep
goods or services of persons who are members of
it in force. The renewal may be paid by the owner
any association from goods or services of persons
of the patent him/herself or a patent attorney firm.
who are not members.
The renewals may be paid in advance. A patent’s
life span is 20 years. The renewal fees work on a
gliding scale and may be viewed on the CIPRO
web site www.cipro.gov.za
How is a trademark used?
Your trademark should be used upon or in relation
to your goods or services, to distinguish them from
those of others. It also serves as an indication of
tRADeMARks
What is a trademark?
consistent quality.
How does a trademark protect you?
A trademark is a means of identification of your
Although you can devise and use your own trade-
goods and services and serves to distinguish them
mark without registering it, its main benefits accrue
from the same kind of goods and services supplied
through registration. A trademark registration entails
by others. Trademark law in some countries, includ-
numerous advantages for you, e.g. a trademark reg-
ing South Africa also protects collective marks and
istration affords you, the owner, the right to prevent
certification marks.
the unauthorised use by another party of an identical
or confusingly similar trademark in relation to goods
A trademark may consist of any sign capable of
or services that are covered by the registration and
being represented graphically, including a device,
also similar goods and services. It also acts as deter-
label, name, signature, word, letter, shape, con-
rent to prospective infringers; it enables proceed-
figuration, pattern, ornamentation, or a container
ings for infringement to be instituted in terms of
15
the Act; it can form the basis of an objection to an
included). If you do it yourself the revenue stamps
application by another to register a confusingly
cost R590 for a filing and R260 for renewal (2008
similar trademark.
fees). Note that, as mentioned with design registration and patents, there are various advantages
to be gained by obtaining professional advice.
Provision is also made for infringement by use of
a trademark, which is identical or similar to a registered trademark if that use would take unfair
advantage of or be detrimental to the distinctive
character or repute of a registered trademark.
What are the registration requirements for a
trademark?
Registration is achieved by filing an application at
Are there any exceptions to trademark
the Trademarks Office in the country in which you
protection?
intend to market products under your trademark
and require protection, e.g. in Pretoria, for the South
A mark may not be registered that is not capable
African market. Trademark rights arise either by
of distinguishing goods or services or which con-
registration or by the use of the trademark in the
sists exclusively of a sign which may serve in trade
course of trade for a given period of time. If a regis-
to designate the kind, quality, quantity, intended pur-
tered trademark has not been used for a period (in
pose, value, geographical origin or other character-
South Africa it is a period of five years), the regis-
istics of the goods or services. Nothing offensive,
tration can be cancelled at the insistence of an
immoral, confusing, or indicating government pa-
interested party. (See address list, in the insert of
tronage may be registered. Infringement will not
this Guide).
arise in the case of bona fide use of names and
descriptive material, reference to the indicated
16
purpose of goods and services, including spare
parts and accessories, parallel importation, and
the use of utilitarian features.
How long does a trademark protect you?
What countries are covered by trademark
protection?
As is the case with regard to patents and registered
designs, a trademark registration is effective only in
the country in which you file the trademark. Regional
protection can be applied for under the CTM (Com-
Protection is for an indefinte period, provided that
munity Trademark) system, to cover countries of
you pay the renewal fee every 10 years.
the European Union and under the Madrid Protocol
to cover a series of countries in the world. South
What will trademark protection cost you?
Africa intends to join the Madrid Union, perhaps in
the course of the next year or so. These opportuni-
An application for registration currently costs R3 559
ties are not, however, free of potential difficulties
per class and renewal costs R1 910 (attorneys’ fees
and you will need to consult a specialist, such as
an attorney who has obtained the Trademark Practi-
There are various classes in the Trademarks Reg-
tioner Certificate from the Institute of Intellectual
ister and a separate application has to be filed for
Property Law. A South African application can again
each class of goods or services claimed.
serve as a basis for your claiming convention priority
in respect of corresponding applications in other
A trademark, logo, corporate identity or brand image
countries, provided such foreign applications are
is probably the single most valuable marketing tool
filed within six months of the South African applica-
that a business can have. It is therefore vital that
tion.
this asset is understood and properly protected.
Tips and comments on trademark protection
Unlike in the case of patents and designs, novelty
is not a requirement for a valid filing. Generally
speaking, the person who is using or intends to use
the trademark may file the application. Thus an
intention to use is a requirement and in some countries (eg USA) use in commerce.
Before a trademark is adopted for use, it is strongly
recommended that a search be conducted by a
properly qualified professional person to determine
its availability in the light of trademarks that have
already been registered.
note: The Government does intend for South
Africa to join the Madrid Union for international registration of trademarks. Enquire at CIPRO for more
information in this regard.
The proprietor of a trademark may allow a licensee
to use his mark, but must ensure that no public
deception or confusion will arise as a result. Registration as a “Registered User” is advisable.
Basic procedure for trademark registration
The person must make sure that he/she chooses
a unique NAME for the product or service. It must
A trademark may become non-distinctive where
not be descriptive of what the product is.
everyone uses it as the accepted description of a
product or service. If it becomes customary in cur-
Step 1: It is strongly advisable to apply for a special
rent language, it will no longer be validly registered.
search at the Trade Mark Section of CIPRO. Form
TM2 needs to be completed and a fee of R85 is
A trademark is an adjective and is not used as a
payable. If there is a logo and/or slogan involved,
noun or verb. It should, therefore, be followed by the
this must also be indicated on the form TM2. The
generic name of the product. Trademarks must be
classification can be determined from the NICE
distinctive e.g. in their colour, typeface or background
Classification (a link is provided on the CIPRO
or any combination of these. If they are registered,
website to this class list). Each different name and
“registered trademark” should be indicated, or an
different class will be a different search and reg-
abbreviation, eg an encircled ®, given.
istration. The search result is usually available in
eight working days.
17
A spot search can also be done at the office at a
cost of R4 per name, but this is only for an identical search and it is NOT advisable to file a registration based on the result of a spot search. The
main purpose of this spot search is only to narrow down your options if you are not sure about
the name to choose for a proper special search.
}
Step 2: If there is no conflict, the person may apply
CoUnteRFeIt GooDs
What does the Counterfeit Goods Act protect?
This law in South Africa (from 1 January 1998) introduces measures aimed against trade in counterfeit goods. Such laws already exist in first-world
countries, eg the UK.
Who is protected?
for registration of the trademark by completing form
TM1 in triplicate. The government fee is R590.
You, the owner of trademarks, copyright works and
certain merchandise marks are given more effec-
If a logo is involved, it must be attached in the block
tive ways than were available in the past to prevent
on the form TM1. A registration number is allocated
piracy of your rights in counterfeit goods.
the next working day. The person may trade with
the name with a TM sign next to the name.
How does the Counterfeit Act protect you?
}
The Act prohibits dealing in counterfeit goods by:
•
Step 3: After examination of the mark (presently
18
being in possession of or controlling counterfeit
goods;
in 36 months time from filing the registration), an
•
making counterfeit goods;
acceptance notice will be sent to the applicant.
•
selling, hiring, bartering, exchanging or offering
This must be taken to the Government Printer to be
advertised in the Patent Journal for three months
counterfeit goods;
•
for possible opposition. If there is no opposition,
exhibiting or distributing counterfeit goods, for
trade purposes, or in any prejudicial way;
the certificate will be issued and the TM sign may
•
importing or exporting in, out or through SA; or
be replace with the ® sign.
•
disposing of counterfeit goods.
The trademark must be renewed every 10 years
The Act empowers inspectors and police, who have
to keep it in force. If the applicant wants to register
a warrant, to enter premises, stop a vehicle if neces-
the mark in other countries with priority claim, they
sary by force, seize, remove and detain counterfeit
must do so within six months of the SA registration
goods, collect evidence, search and terminate coun-
by making use of a patent/trademark attorney firm.
terfeit activities. The Commissioner for Customs and
Excise and Customs staff have power to seize and
detain counterfeit goods imported into the country.
Seized goods are removed to warehouses and initial
•
make this law effective.
where someone carries on his business in contravention of the law;
difficulties of limited space are being overcome, to
•
where someone spreads disparaging and untrue allegations about your goods, service or
business;
PRoteCtIon bY otHeR LAws
•
thority) your confidential information or trade
secrets; and
In addition to the various forms of protection discussed so far, a product design may enjoy some
where someone acquires and uses (without au-
•
where someone appropriates to himself the fruits
measure of protection on the basis of the principles
of your skills, labour and expense, eg by too
of common law (law not found in Acts of Parliament)
closely copying his competitor’s (your) product
in common law countries and in certain other laws.
designs.
Under common law you, the creator of a design,
may be able to prevent others from exploiting a confusingly similar version of your design on the basis of
passing it off to the public as yours; or prevent others
from reaping the commercial benefits and advantages of your design by appropriating to themselves
a substantially similar design and exploiting it in circumstances amounting to unfair competition.
The law of unfair competition provides, in general,
that anyone who intentionally or negligently causes
loss or damage to you, a business rival (ie a competitor), through his wrongful conduct, will be liable
for damages, and his conduct can be stopped or
prevented by way of an interdict.
PRoteCtIon eLsewHeRe
The cost for South Africans of obtaining legal protection elsewhere requires a carefully planned strategy
including marketing, finance and cash flow projections, based on realistic cost projections. You must
consult an experienced IP practitioner for assistance.
All forms of legally recognised intellectual property
protection are only enforceable within the area of
the country’s legal jurisdiction. This includes other
African or overseas countries, which operate independently when it comes to the protection of intel-
The following are situations where your rights may
lectual property. For this reason you need to file
be wrongfully affected:
patents and register trademarks and designs sepa-
•
rately in these countries, as has been discussed.
where someone imitates the distinctive appearance, trade name, get-up, etc, of your products
•
so as to deceive or confuse the public into taking
Note that some countries are signatories to inter-
his products as those of yours, ie so-called pass-
national protection agreements and others not. This
ing off;
means that if they are signatories, they will honour
where someone deceives the public as to the
the date of your filing or registration in this country,
quality, extent, nature, etc, of his own goods or
provided that you lodge your application for protec-
service;
tion in their country within the prescribed time.
19
For those countries that are not signatories to any
attorney will be able to give you more information
international agreements relating to protection of
on such countries. Alternatively, contact the Patents
intellectual property, you need to register or file
Office in Pretoria (see address list, inserted in this
separately in those countries. Your nearest patent
Guide).
LICenCes, AssIGnMents AnD otHeR AGReeMents
Once a product design has been completed, it is
•
A confidentiality agreement, where you, the orig-
likely that you, the designer, will have to enter into
inal designer, need to disclose confidential infor-
one or more agreements with others in regard to
mation to someone else, eg to acquire technical
the further exploitation or commercialisation of your
assistance, financial assistance, marketing ad-
design. Although a written contract is not always
vice, etc, and you wish to safeguard your rights.
compulsory, it is always advisable to reduce the
terms and provisions of an agreement to writing. It
•
A joint venture agreement, where you, the origi-
is preferable to obtain the assistance of a lawyer in
nal designer, wish to enter into a partnership or
this regard, but whether or not you get a lawyer,
other continuing business relationship with some-
it is of the greatest importance to put it in writing.
one else in regard to the further exploitation or
commercialisation of your product.
The following types of agreements often arise with
regard to novel products:
•
•
A registered user agreement, where you, the
An assignment agreement, when you, the origi-
original designer, have registered a trademark
nal designer, decide to sell your design and all
in respect of your product, and wish to give some-
rights in it to someone else, so that they will be-
one else the right to use your trademark.
come the new owner of all the rights, and will
20
exploit the design for their benefit, usually upon
note: A registered user agreement should
payment of a lump sum, but sometimes coupled
preferably be in writing, and should preferably
with a continuing royalty payment.
be recorded at the Trademarks Office.
note: An assignment of copyright must be in
writing.
•
A restraint of trade agreement or clause, eg
where an employee leaves employment, or
when a business is sold. A restraint clause may
•
A licence agreement, where you, the original de-
be held to be unenforcable if it is unreasonable.
signer, decide to retain ownership of this design
and the rights therein, but licence or authorise
It is possible that some of these agreements can be
someone else to be responsible for the com-
recorded against a design, patent or trademark
mercialisation of it, usually upon payment of a
registration, to notify third parties of the contrac-
continuing royalty to you.
tual position. It is usually important for the person
receiving rights under such agreements for them to
that it is reasonable and not against public policy.
be registered at the Design, Patent or Trademark
If the product involves inherent dangers or risks,
Office.
it is essential that suitable warnings be given.
Lawyers well experienced in competition law should
Liability on the basis of delict
be consulted, as well as IP lawyers, for example,
competition law in South Africa, anti-trust law in USA
Liability can arise also in circumstances where there
and the block exemptions to the free-trade rules in
is no contractual relationship between the designer
Europe may be most important in structuring IP-
of a product and the person who suffered the loss
related agreements.
or damage. The liability in this case is based on the
principle that someone will be liable who, through
his intentional or negligent conduct in supplying a
PRoDUCt LIAbILItY
The manufacturer or designer of a product can be
held liable for loss or damage caused as a result of
the use of his product, either on the basis of contract or on the basis of delict (or unlawful conduct).
defective product, causes loss or damage to someone. Negligent conduct occurs where a designer
provides a product that will be defective or dangerous even with normal use, or where the designer
neglects to warn a purchaser against inherent dangers, or neglects to instruct a purchaser on proper
installation and/or use and maintenance to avoid
potential dangers.
Liability on the basis of contract
Where there is a contractual relationship between
the designer or manufacturer of the product and
someone suffered loss or damage, eg where the
designer or manufacturer sold or supplied the prod-
Where the product is inherently dangerous or can
be used in a dangerous manner, a complainant will
have to show that the loss or damage arose as a
result of an inherent defect in the product, or as a
result of the normal installation or use of the product,
and that the designer acted negligently, eg in failing
uct to that person, liability can arise. The liability is
to ensure that no defects existed, or in failing to warn
based either on a breach of warranty (express or
against potential risks or dangers.
tacit) that the product will be suitable for its purpose,
or on the warranty (tacit) of a seller against latent or
It is essential that suitable warnings be provided
hidden defects in the product or on the basis of some
to users of the product where it involves inherent
term in the contract.
risks, or requires precise installation or use.
Liability may be excluded by way of a suitable in-
Where the user of a product adapts or modifies the
demnity or other clause. Such a clause will be en-
product, and as a result suffers loss or damage,
forceable provided that it has been brought to the
the original designer or manufacturer is unlikely
notice of the other contracting party, and provided
to be held liable.
21
It should be noted that certain safety requirements
This is especially important in the case of items such
or minimum standards may have been prescribed in
as workshop machinery which in South Africa must
regard to certain products (eg electrical appliances),
comply with the Machinery and Occupational Safety
by law often through standards authorities such as
Act, 1983 (the MOS Act), and the National Occupa-
the DIN and TÜV in Germany, SAE in USA, BSS in
tional Safety Act (NOSA) requirements. It is recom-
UK and the SABS in our country and other regula-
mended that the designer of a product that is likely
tory bodies. Our SABS can give you assistance not
to involve safety aspects make the necessary en-
only in regard to standards compliance here, but
quiries in this regard. (See address list in the insert
also in contacting foreign standards authorities.
of this Guide.)
VALUAtIon oF InteLLeCtUAL PRoPeRtY
What could this mean for me?
tangible asset, probably exceeds the capital value
of all plant producing and bottling Coca-Cola world-
While Intellectual Property, eg patents and trade-
wide. Placing IP value on the balance sheet can im-
marks, has always been valued, increasing recog-
prove the leverage of a company and justify in-
nition for this aspect has become well established,
creased loan finance.
especially for asset registers in company balance
22
sheets. Realisation has gained ground amongst
So don’t underrate the value of a portfolio of protec-
accountants and corporate executives that IP can
tion for your design, the portfolio may include a pat-
form a significant proportion of the assets in some
ent, design registration, copyright and trademarks.
businesses. For example, it is believed that the
Professionals are developing specialist practices
value of the Coca-Cola trademark, although an in-
in the skills of IP valuation.
tAX IMPLICAtIons
Should you generate or derive income from patents
and similar property, you may, over a period, deduct from
•
acquiring from someone a copyright, design, patent,
trademark or similar property.
taxable income your expenditure on:
•
devising and developing an invention;
Since South African tax law is based on the residence
•
generating or making a design, trademark, copy-
principle and no longer the source principle, income in
right or similar asset;
a South African resident’s hands, from foreign sources
registering or obtaining a patent, design registration
is taxable. The international structuring of IP owner-
or trademark; and
ship and revenue flows is an advanced and complex
•
subject and will require advice from specialists in
Consult a tax expert about exceptions to this ruling,
this field.
eg how it affects South African residents, companies
in neighbouring states or exporters.
Value added tax (VAT) is assessed on intellectual
property transactions, unless they relate to foreign
The costs of extending or renewing the term of a
rights or foreign residents, when the tax is zero
patent, design registration or trademark can be de-
rated.
ducted in full, provided that you produce or derive
income from these assets.
InteLLeCtUAL PRoPeRtY ACts AnD tReAtIes
Copyright in South Africa is governed by the Copy-
A single patent application can be made at the Euro-
right Act, 1978 (Act 98 of 1978), as amended.
pean Patent Office (EPO) in Munich to cover 31
European countries and 5 extension states.
The Berne Copyright Convention (1886) determines
international rights between signatory countries, as
does the Universal Copyright Convention (1952).
•
Registered Designs are governed in South Africa
by the Designs Act, 1993 (Act 195 of 1993).
•
Patents are governed in South Africa by the
Patents Act, 1978 (Act 57 of 1978) as amended.
•
Trademarks are governed in South Africa by
A single application to the Eurasian Patent Convention (EAPO) covers 9 countries of the former Soviet
Union.
Regional patent grants covering African countries
are available to South Africans, they are: ARIPO
covering 13 (former British colonial) countries (excluding SA), Namibia and Mozambique; and OAPI
covering 15 (former French colonial) countries.
the Trademarks Act, 1993 (Act 194 of 1993),
as amended.
23
The Madrid Protocol relates to the international registration of marks and South Africa intends to join
South Africa is signatory to the International Con-
within the coming year or so.
vention for the Protection of Industrial Property (the
Paris Convention) which relates to patents, designs
The Community Trademark Convention enables
and trademarks.
South African applicants to file a single trademark
application with the Community Trademarks Office
This Convention provides for recognition of rights of
priority of designers, inventors and trademark owners who have filed for protection in eg their home
country.
in Alicante, Spain, which will have effect throughout
the whole European Union.
As local and international legislation is constantly
being reviewed, always consult a patent attorney
for the latest changes to legislation.
tHe PRoDUCt DeVeLoPMent PRoCess
The journey of a new product – from idea to inno-
business structure to support these activities and
vation – comprises a complex process requiring a
to protect his or her interests including intellectual
wide range of experts, including people such as
property.
engineers, industrial designers, market consultants,
manufacturing specialists, intellectual property ex-
Enterprise creation
perts and more. The success of product development is greatly influenced by the cost, quality and
Good product ideas often have the potential to be
the time to market of the innovation. The innovator
developed into business opportunities. The typical
is faced with the challenge of considering from the
development process of a small business is shown
outset all elements of the product life cycle and de-
in the diagram (top) on page 25.
sign the product to be successful in each stage of
its life cycle. Concurrent engineering is an enabling
However, there are many pitfalls on the road to a
approach that offers exactly this.
successful product or business, which can be avoided by calling on experts to support you.
To get a new product into the market, the innovator
must do more than just develop something that
Find information on institutions that can assist you
works. The technical development steps involved
with developing your product in the insert of the
in developing a new product should be matched to
Guide. Visit www.productdevelopment.co.za for
a careful assessment of the new product’s market.
more information on product development.
At the same time, the innovator needs to evolve a
24
Product or
business idea
}
Product
research
}
– Customer
– Sample
collection
– Data
collection
Product
development
– Project
}
Feasibility
design
identification
– Prototype
generation
– Design
optimisation
– Design for
manufacture
– Process
and support
– Technical
– Mandatory
– Business
feasibility
registration
skills and
– Economic
– Identify and
training
and financial
select tech-
– Technical
modelling
nology and
support
equipment
– Business
– Business
plan
preparation
– Identify and
select
– Identify and
suppliers
select key
– Identify and
staff
select staff
– Identify and
– Patenting
apply for
systems
– Pilot
incentives
production
Incubation
training
– Production
optimisation
}
– Technical
– Concept
– Theme/image
creation
business
feasibility
– Product
Enterprise
– Foundation
– Market
planning
generation
}
– Funding and
investment
– Contracting
– Management
support
– Social
support
– Market
support
}
Enterprise
improvement
– Competitiveness
improvement
– Business
skills
development
– Technical
skills
development
– Market skills
development
– Quality
improvement
– Legal support
– Image
support
systems
– Business
processe
– Install and
commission
– Training
25
stAnDARDs AnD DesIGn
We tend to think of National Standards and design
•
by children,
as being from two different worlds. We think of design as being at the ‘leading edge’ finding new solu-
•
considered to be reactive, since by definition, these
product, or
•
the standards or test methods that need to be
followed in order to meet certain labeling re-
documents are developed by groups (or commit-
quirements.
tees) and describe existing best practices or solutions to problems.
the safety or environmental impact of the processes used to assemble or manufacture the
tions to problems, a more proactive approach to
problem solving. Standards on the other hand, are
the safety of the product, particularly when used
Standards can be regarded as a valuable resource
for designers and in many cases are becoming a
Although the two groups approach problems from
valuable part of a designer’s toolbox when con-
a different perspective, the two worlds are moving
sidering solutions to certain problems. There are a
closer together and the work done by designers is
number of examples where the use of standards can
of benefit to standards developers in developing
make the life of designers and developers easier,
more relevant standards. The body of knowledge
since certain problems could already be described.
contained in standards is of significant benefit to
designers to ensure that their products move from
Product safety
good ideas to market more efficiently.
In the area of product safety, many standards have
been developed and many aspects of both the
26
tHe InteRDePenDenCe oF DesIGn
AnD stAnDARDs
safety of the product, as well as the safe installation
and use of certain products have been described.
In many cases, the standards also describe some
minimum performance characteristics. Examples
More and more frequently, the design world is start-
of such standards include the numerous electrical
ing to make direct reference to standards. Many
appliance standards that do not necessarily describe
markets are starting to demand socially responsible
what an appliance should look like, but describe
design – meaning that new products need to be able
how it should be used (safely), as well as what it
to demonstrate certain qualities to the purchasers
should do.
that may not necessarily be evident in the product
itself, for example:
Product interoperability
• the environmental impact during the design life
of the product,
• the accessibility of the product to disabled people,
Products very seldom exist in isolation. They may
work with other products or services or they could
be made up of components and inputs that are not
as the performance rating of the product under
necessarily redesigned each time. The standards
certain conditions (eg the energy rating or fuel effi-
for these associated products can help the designer
ciency of products). In order to make these claims,
to develop a product that will work both effectively
the manufacturer will need to make use of standard
and efficiently. By way of example, electronic prod-
tests and in specific cases, some form of third party
ucts can have standard switches plugs, printed
attestation may also be required.
circuits and chips incorporated into their design
which would assist in the speed to market and the
lowering of manufacturing costs.
Ergonomics
Many standards contain the information about the
Marking
repeated use of certain products. In some cases
The marking of products follows conventions and
norms that have been established over time. Many
of these are laid down in standards. It saves a lot of
time and money when doing market research if the
designer can make use of existing resources such
as the ISO 7000 database standard on graphical
these can be in the form of requirements such as
the accessibility of certain products to people with
disabilities, or the safe use of the product in certain
environments. Designers can make use of this resource rather than having to research these issues
every time.
symbols to mark the product or its components.
tHe DeVeLoPMent oF stAnDARDs
Labelling
Products often also require that information about
the product that cannot necessarily be determined
One of the key pillars of standards is that they should
be relevant and useful. It makes no sense for the
by examining the product itself, be contained in a
national standards body to develop a set of stand-
label. Often the requirements for product labels are
ards that are not used in the market place, either
contained in legislation, but designers and manufac-
because they add no value or because they hinder
turers may choose to provide additional information
the development of new products.
depending on the intended market of the product.
Standards can provide a valuable resource in terms
These labels can include things such as the environ-
of defining the problem space in which a product is
mental impact of the product or manufacturing
designed, by providing a set of documents that de-
process (eg ‘dolphin friendly’ tuna, or wood prod-
scribe the constraints, as well as the output require-
ucts from a sustainable forest) or they can describe
ments for the finished product.
the composition of the product (such as the nutrient labelling of food products or composition of
A standards developing organisation such as the
plastics), or the labelling may include aspects such
South African Bureau of Standards (SABS) strives
27
not to restrict innovation when drafting standards
In areas of new product development, it may also
and not to describe the products in terms of their
form part of the marketing strategy to have your
outputs or what they should do. There is a fine
product described as the national or international
line between being flexible enough to allow for the
standard for this specific product so that your prod-
development of new products that do not yet exist,
uct complies to the standard at least or at most,
while still being able to verify that the product does
your product complies but your [future] competitors’
indeed conform to the standard.
do not.
Standards development organisations worldwide,
Designers should not only look at standards as a
recognise that we do get this wrong at times – sometimes standards may restrict certain new products,
or technology if a field changes over time. For this
reason, standards may be amended and are also
regularly reviewed for relevance (every five years
in the case of Standards South Africa, a division of
the SABS).
Standards can reflect the changes in the market
place and the problems that designers are facing if
these people participate in the standards development process. Standards developers and designers
constraint on their new designs, but should regard
the incorporation of standards as a way to increase
the competitive potential of their designs.
In summary, as more new products enter the market
at an increasing rate, it is becoming apparent that
keeping abreast with the latest design trends can
lead to better standards. At the same time, designers
can deliver better and more efficient design by keeping abreast with the latest developments in standards.
need to work together to ensure that the standards
28
that we have are relevant, that they allow for inno-
Standardisers and designers should work more
vation and that they cover the areas that need to
closely together in order to provide innovative and
be covered.
relevant products that get to the market place.
To contact the Standards Division of the SABS,
stAnDARDs As A MARketInG tooL
The introduction of new products to the market often requires more than exciting and innovative design. Many purchasers are risk-averse and would
like to know that the product conforms to certain
minimum requirements or standards. It therefore
pays to have some form of compliance statement
as part of the marketing strategy.
refer to the insert in this Guide.
ThE DESIgN INSTITuTE of ThE SABS
The SABS Design Institute, promotes the benefits
Design for Development Initiative
of good design in order to stimulate the economic
and technological development of South Africa
The Design for Development Initiative was founded
in 1997 by the Design Institute and includes confer-
The Institute’s initiatives focus on education, indus-
ences as well as international meetings on Design
try and information. It administrates a number of
and Africa. The initiative addresses important issues
award schemes and publishes regular ad hoc pub-
such as African global competitiveness, design edu-
lications.
cation across the continent, and design as a catalyst
for socio-economic development.
The Institute founded the following initiatives:
Design Achievers Award
SABS Design Excellence Awards
The award encourages entrepreneurial spirit and
The award scheme aims at recognising the achievements of South African product designers, encouraging local product design and manufacture, as well
as promoting international competitiveness of local
products.
design leadership amongst tertiary design students.
New product development support programme
This programme aims at assisting and encouraging
new product development in South Africa through
the prototype consultation sessions, seminars and
publications.
SABS HEAD OFFICE: Pretoria
Street Address: 1 Dr Lategan Road, Groenkloof
Postal Address: Private Bag X191, Pretoria, 0001
Telephone:
+27 (0) 11 428 7911
www.sabs.co.za
SABS Design Institute
Telephone:
+27 (0) 12 428 6326
Fax:
+27 (0) 12 428 6546
[email protected]
www.designinstitute.org.za