Some views from the South African Constitutional Court on patent revocation and infringement matters: Ascendis Animal Health (Pty) Ltd v Merck Sharp Dohme Corporation and Others 2020 (1) SA 327 (CC)

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

Some views from the South African Constitutional Court on patent revocation and infringement matters: Ascendis Animal Health (Pty) Ltd v Merck Sharp Dohme Corporation and Others 2020 (1) SA 327 (CC)

Author Mikhalien Du Bois

ISSN: 2521-2591
Affiliations: Associate Professor in Intellectual Property Law, University of South Africa
Source: South African Intellectual Property Law Journal, 2021, p. 1 – 17
https://doi.org/10.47348/SAIPL/v9/a1

Abstract

In South African law, the substantive requirements for a patent may be scrutinised during infringement proceedings or revocation proceedings. Lack of novelty (or anticipation) is a ground for revocation of a patent but can also serve as a defense in an infringement matter. After a series of decisions by the Commissioner of Patents and the Supreme Court of Appeal on infringement and revocation matters relating to Merck’s Patent 98/10975 and its alleged infringement by Cipla (now Ascendis), the Constitutional Court was asked to deliberate the matter in Ascendis Animal Health (Pty) Limited v Merck Sharp Dohme Corporation and Others 2020 (1) SA 327 (CC). The main issue related to the principle of res judicata, and whether invalidity of a patent may be considered as a defense during infringement matters after the validity of the patent was already determined during revocation proceedings between the same parties. The decisions also considered whether each revocation ground constituted a separate issue or whether revocation is the issue for purposes of determining whether a matter is res judicata. A review of all the preceding decisions also indicate that the Supreme Court of Appeal may have developed the way in which lack of novelty is determined in South African law, but without explicitly acknowledging that the approach is different. The Constitutional Court’s evenly split decisions (per Khampepe J and Cameron J) indicate different approaches to reaching just and fair outcomes in patent matters. While Khampepe J’s decision focuses more on the need to remove invalid patents from the register, Cameron J’s decision focuses on preventing harm from piecemeal litigation.

Ownership of intellectual property rights: Did Vodacom ‘sell’ its rights in Makate v Vodacom?

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

Ownership of intellectual property rights: Did Vodacom ‘sell’ its rights in Makate v Vodacom?

Author Malebakeng Agnes Forere

ISSN: 2521-2591
Affiliations: Associate Professor in Law, University of the Witwatersrand
Source: South African Intellectual Property Law Journal, 2021, p. 18 – 34
https://doi.org/10.47348/SAIPL/v9/a2

Abstract

The case between Mr Makate and Vodacom, which was decided by the highest court in the land — the Constitutional Court, raises interesting intellectual property questions; yet it was argued and decided on as a purely contractual matter. Specifically, Vodacom was found to have been in breach of an agreement to reward a former employee who conceived an idea that led to the development of a product known as ‘Please Call Me’ while still employed by Vodacom. In the main, the dispute is now about fair compensation payable to Mr Makate. It is argued herein that the determination of fair compensation is predicated on the determination of ownership of the ‘Please Call Me’ product. This paper finds that ownership of the product in question vests in Vodacom in accordance with the Copyright Act and the Patents Act, even though the product was never patented, which, in turn, makes compensation to Mr Makate even less determinable. Accordingly, it is argued herein that any determination of compensation must be based on how the industry, in general, and Vodacom, in particular, has rewarded its employees who have conceived workable ideas in the past. Thus, compensation cannot be based on market value.

A right to read object code – software copyright law and the development of a decompilation exception in South Africa

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

A right to read object code – software copyright law and the development of a decompilation exception in South Africa

Author Cobus Jooste

ISSN: 2521-2591
Affiliations: Consolidoc Postdoctoral Fellow in Law, Department of Mercantile Law, Faculty of Law, University of Stellenbosch
Source: South African Intellectual Property Law Journal, 2021, p. 35 – 66
https://doi.org/10.47348/SAIPL/v9/a3

Abstract

The opportunity to read and extract knowledge from a lawfully obtained copy of any published work is a cornerstone of copyright law, except in the case of computer programs. This article examines the development of an exception to copyright protection that will permit decompilation of object code as a means to access its underlying ideas. It illustrates that the persistent link between software and literary works leads to an unduly narrow view of decompilation. This contention is supported by a basic technical illustration of the decompilation process to support the submission that reading object code should not amount to copyright infringement in any way. Thereafter, the proposed decompilation exception in South African copyright law is critically analysed in light of the developmental objectives expressed in national policy, to formulate an alternative approach based on the inherent flexibilities in international law and local conditions.

Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA) — Revisiting the justiciability of cross-border copyright infringement in South African courts

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

Gallo Africa Ltd v Sting Music (Pty) Ltd 2010 (6) SA 329 (SCA) — Revisiting the justiciability of cross-border copyright infringement in South African courts

Author Thato M Moloto

ISSN: 2521-2591
Affiliations: Consultant, World Intellectual Property Organization (Copyright Management Division), Geneva
Source: South African Intellectual Property Law Journal, 2021, p. 67 – 86
https://doi.org/10.47348/SAIPL/v9/a4

Abstract

This contribution examines the basis for and implications of the strictly territorial approach of South African courts in cross-border copyright infringement cases, requiring litigants to bring separate infringement suits in every country where infringement is alleged. This position by the courts loosely hinges on principles of effectiveness, locality and comity, as well as the classification of all intellectual property — copyright in this case — as immovable incorporeal property. In this belated case note, the Roman-Dutch law origins from which this classification is inferred to be derived from the English common law precedent with which it is paralleled and private international law principles applicable are briefly interrogated in light of prevailing constitutional prescripts. This complete bar on the authority of local courts on what is a ubiquitous concern for rights holders is a matter with far-reaching consequences.

DABUS gains territory in South Africa and Australia: Revisiting the AI-inventorship question

by | Jan 15, 2022 | SAIPLJ, SAIPLJ 2021

DABUS gains territory in South Africa and Australia: Revisiting the AI-inventorship question

Author: Desmond Osaretin Oriakhogba

ISSN: 2521-2591
Affiliations: Senior Lecturer, Department of Mercantile and Private Law, University of Venda
Source: South African Intellectual Property Law Journal, 2021, p. 87 – 108
https://doi.org/10.47348/SAIPL/v9/a5

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Oriakhogba, DO
DABUS gains territory in South Africa and Australia: Revisiting the AI-inventorship question
Senior Lecturer, Department of Mercantile and Private Law, University of Venda
https://doi.org/10.47348/SAIPL/v9/a5

Abstract

This paper draws from and builds upon DO Oriakhogba ‘What If DABUS Came to Africa? Visiting AI Inventorship and Ownership of Patent from the Nigerian Perspective’ (2021) 42(2) Business Law Review 89. It reviews the recent granting of a patent by the Companies and Intellectual Property Commission (CIPC) to Dr Stephen Thaler in respect of the DABUS-generated invention in South Africa and the judgment of the Australian Federal Court (FCA) upholding AI-inventorship. The review, which is based on desk research, is conducted against a backdrop of statutory provisions and case law from both countries, the provisions of the Patent Cooperation Treaty (PCT) and relevant literature dealing with the inventorship question. The paper determines whether, without reform of the extant patent law and policy, recognition of artificial intelligence (AI) as an inventor does not undermine the foundational concept of human inventorship, and the central focus on human creation and agency for intellectual property protection in South Africa and Australia. In connection with this, the paper asks and examines the question of whether the CIPC patent grant and the FCA judgment can stand judicial scrutiny under the extant patent regimes in South Africa and Australia.

A Critical Analysis of the Amendments Proposed to the Social and Ethics Committee by the Companies Amendment Bill, 2018

by | Jan 12, 2022 | SAMLJ, SAMLJ V33 I2

A Critical Analysis of the Amendments Proposed to the Social and Ethics Committee by the Companies Amendment Bill, 2018

Authors: Delani Milton Mahhumane and Rehana Cassim

ISSN: 1996-2185
Affiliations: Former Postgraduate Assistant, Department of Mercantile Law, University of South Africa; Associate Professor, Department of Mercantile Law, University of South Africa
Source: South African Mercantile Law Journal, Volume 33 Issue 2, 2021, p. 153 – 175
https://doi.org/10.47348/SAMLJ/v33/i2a1

Abstract

The Companies Amendment Bill, 2018 proposes certain changes to the social and ethics committee established in terms of s 72(4) of the Companies Act 71 of 2008 and reg 43 of the Companies Regulations, 2011. These new provisions are critically discussed in this article. Although some of these provisions are commendable, others give rise to certain concerns examined here: the lack of clarity in the functions of the social and ethics committee, the proposed amendments regarding its appointment and composition, and the ambiguity in the exemptions from the requirement to appoint this committee. This article also suggests further amendments to the current legislative provisions regarding this committee.

Investigating the Need to Introduce Compulsory Interest Arbitration as a Method to Prevent Lengthy Strikes in South Africa

by | Jan 12, 2022 | SAMLJ, SAMLJ V33 I2

Investigating the Need to Introduce Compulsory Interest Arbitration as a Method to Prevent Lengthy Strikes in South Africa

Author: Mlungisi Tenza

ISSN: 1996-2185
Affiliations: Senior Lecturer, School of Law, University of KwaZulu-Natal
Source: South African Mercantile Law Journal, Volume 33 Issue 2, 2021, p. 176 – 199
https://doi.org/10.47348/SAMLJ/v33/i2a2

Abstract

The issue of lengthy strikes in South Africa has been a cause for concern since it destabilises the economy and can result in a loss of employment if it is not managed properly. A strike that takes too long to be resolved causes anger towards strikers, so creating a fertile environment for the eruption of violence between striking and non-striking workers. Damage to property and harm to civilians has been reported where striking workers have become violent during a strike. It appears that the existing remedies fail to curb long strikes and resultant violence, as unions and members continue with their action despite the granting of an order of interdict to stop the conduct. To solve the problem of long and consequently violent strikes, the article advocates the introduction of a compulsory interest arbitration in the labour relations law of South Africa. A compulsory interest arbitration will force the parties into arbitration once it is established that the strike has continued for an unreasonably long period without a solution. The use of compulsory interest arbitration will not be unique to South Africa, as other countries such as Canada and Australia use it in their labour relations systems – which helps them deal with long and possibly harmful or violent strikes. The article argues that lessons can be learned from these countries on how South Africa can deal with its own protracted strikes. The article further proposes that the LRA be amended to include a provision that will enable the Minister to intervene where the parties fail to reach agreement on disputed issues, and where it is in the public interest to do so. Introducing a compulsory interest arbitration in the labour relations system could limit the right to strike. However, the article argues that such a limitation may be justified in terms of s 36 of the Constitution.

The Job Security of Employees of Financially Distressed Companies

by | Jan 12, 2022 | SAMLJ, SAMLJ V33 I2

The Job Security of Employees of Financially Distressed Companies

Authors: Mieka E. Loubser and Christoph Garbers

ISSN: 1996-2185
Affiliations: BAccLLB candidate, Faculty of Law, Stellenbosch University; Associate Professor, Faculty of Law, Stellenbosch University
Source: South African Mercantile Law Journal, Volume 33 Issue 2, 2021, p. 200 – 237
https://doi.org/10.47348/SAMLJ/v33/i2a3

Abstract

This contribution considers the legislative regulation of the job security (which boils down to preservation of employment) of employees in case of financial distress of a company. It juxtaposes the legislative regulation of four interrelated processes a company may engage in where it finds itself in financial distress, namely a voluntary internal restructuring (especially retrenchment), the transfer of the business or part of the business, business rescue and winding up. The legislative endeavour to preserve the job security of employees in all these processes is described and analysed. The discussion shows that room exists for companies to circumvent this protection and, to the extent that the protection does apply, that it remains difficult for employees to ultimately challenge the substance of decisions negatively affecting their job security. The main protection for employees in all these processes is procedural in nature and to be found in their rights to be informed of and consulted prior to decisions negatively affecting them. In this regard, business rescue is the most employee-friendly process. Participation in this process by employees, however, requires a fine balance as it may be self-defeating and lead to winding up and the permanent loss of jobs.

Incompatibility as a Ground for Dismissal in Contemporary South African Law of Unfair Dismissal: A Review of Zeda Car Leasing and Other Recent Cases

by | Jan 12, 2022 | SAMLJ, SAMLJ V33 I2

Incompatibility as a Ground for Dismissal in Contemporary South African Law of Unfair Dismissal: A Review of Zeda Car Leasing and Other Recent Cases

Authors: Chuks Okpaluba and Tumo Charles Maloka

ISSN: 1996-2185
Affiliations: Research Fellow, Centre for Human Rights, University of the Free State; Associate Professor, Department of Mercantile and Labour Law, University of Limpopo
Source: South African Mercantile Law Journal, Volume 33 Issue 2, 2021, p. 238 – 259
https://doi.org/10.47348/SAMLJ/v33/i2a4

Abstract

Although incompatibility is not listed along with incapacity, misconduct, or operational requirements in s 188(1)(a) of the Labour Relations Act 66 of 1995 as a ground for dismissal, in practice, it has been likened to all these statutorily laid down grounds to justify dismissal and abundant case law abound to bear witness to this assertion. A cursory reading of the cases of Zeda Car Leasing (Pty) Ltd t/a Avis Fleet v Van Dyk [2020] ZALAC 4; Mgijima v MEC, Department of Education, Gauteng [2014] ZALCJHB 414; Edcon Ltd v Padayachee [2018] ZALCJHB 307 and Watson v South African Rugby Union (SARU) [2017] ZALCJHB 264 where incompatibility was approached respectively, from the prism of operational requirements; incapacity and misconduct; coupled with some recent cases discussed herein, clearly indicate that incompatibility has not only covered the field, it has also acquired a pride of place in contemporary South African law of unfair dismissal. Given these circumstances, the authors recommend the insertion into s 188(1)(a)(i) by way of an amendment such that the subsection will include a fair reason ‘related to the employee’s conduct, incapacity or ‘‘incompatibility’’ ’. This will definitely clear any lingering doubts surrounding the role of incompatibility and empower the arbitrator and the Labour Court to adjudicate with a level of clarity in the law of unfair dismissal.

The Regulation of False Advertising in South Africa: An Analysis of the Consumer Protection Act 68 of 2008 and Self-Regulation

by | Jan 12, 2022 | SAMLJ, SAMLJ V33 I2

The Regulation of False Advertising in South Africa: An Analysis of the Consumer Protection Act 68 of 2008 and Self-Regulation

Authors: Yeukai Mupangavanhu and Dominique Kerchhoff

ISSN: 1996-2185
Affiliations: Associate Professor, University of Western Cape; Former student, University of the Western Cape
Source: South African Mercantile Law Journal, Volume 33 Issue 2, 2021, p. 260 – 288
https://doi.org/10.47348/SAMLJ/v33/i2a5

Abstract

The Consumer Protection Act 68 of 2008 (CPA) regulates the provision of goods and services, the conclusion of consumer contracts as well as the promotion and marketing of goods and services. It also protects consumers from unscrupulous advertisers who use false and misleading advertisements to induce consumers to enter into contracts which they would otherwise not have concluded. This article seeks to critically analyse the legislative provisions relating to false, misleading, and deceptive advertising, and the seemingly accessible and efficient legal redress mechanism created under the CPA. Self-regulation by bodies such as the Advertising Regulatory Board, which is responsible for the regulation of the advertising industry in South Africa, is also discussed in detail. The article concludes that the co-existence of the CPA and self-regulation is pertinent to ensure that consumers are adequately protected from unscrupulous advertisements. This is because self-regulation provides an additional layer of protection to consumers. It is also argued that the forums created under the CPA should be given powers to declare certain promotional activities and advertisements unfair, unjust or unreasonable.