Intellectual Property Laws Amendment Bill

Responses to Portfolio Committee on Trade and Industry, on Public Hearings

10 November 2010Parliament, Cape Town

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Delegation

• Ms Zodwa Ntuli: Deputy Director General, Consumer and Corporate Regulation Division

• Mr MacDonald Netshitenzhe: Director, Commercial Law and Policy • Adv Rory Voller: Director, Legal and Regulatory Services

(Companies and IP Registration Office)• Mr Simphiwe Ncwana: Deputy Director, Intellectual Property • Prof Esme’ du Plessis: Member of Standing Advisory Committee on

Intellectual Property

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Purpose

The purpose of this presentation is to provide the Portfolio Committee with the initial responses of the dti to issues raised by stakeholders during the public hearings on the

Intellectual Property Amendment Bill

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General Overview

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Introduction• Policy on Indigenous Knowledge System (IKS) was adopted in 2004 – as a

consequence, Patents Act was amended in 2006 to deal with Indigenous Knowledge (IK) matters

• In 2007 the Intellectual Amendment Bill and Policy we approved by Cabinet for public consultation, subject to further consultation with specified government departments

• The Bill was approved by Cabinet for introduction into Cabinet in 2009, and resubmitted and approved for introduction in 2010.

• Bill seeks to introduce amendments to the Intellectual Property (IP) Laws in order to protect IK as envisaged in the IKS Policy and in a manner consistent with the amendments introduced to the Patents Act in 2006.

• Strengths and weaknesses of the IP system in the protection of IK were shared with the Portfolio Committee, including experience of other foreign countries and the current debates at international level (see pages 10-19 of dti Policy as approved by Cabinet)

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Introduction

• A list of countries that have used the IP system to protect IK was given as well as the approach that the World Intellectual Property Organisation (WIPO) and other United Nations bodies such as the Food and Agriculture Organisation and the UN Environmental Program that administers the Convention on Bio-Diversity.

• The IKS Policy envisages a package of solutions to address IK protection, which are not mutually exclusive but complementary. The co-existence of the specific legislation and IP to protect IK has been emphasised before.

• WIPO General Assembly 2009 took a decision that the IP system or the sui generis maybe adopted in treaty formulation in the protection of IK or a combination thereof.

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Introduction

• The Portfolio Committee also took initiative of conducting enquiries on the Bill;• Workshop with Prof C. Visser of UNISA• Public Hearings in Eastern Cape• Visit to WIPO• Workshop with WIPO and Institutional Center for Trade and

Sustainable Development• Presentation by Department of Science and Technology

• Briefings were held on the Policy and the Bill with the Portfolio Committee – Public hearings took place on 19-20 October and 3 November 2010

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Prevention of bio-piracy or misappropriation of genetic material or knowledge of indigenous or local communities

Empowerment of communities to have control in the commercialization of their knowledge

Provision of assistance to communities in the development of their livelihood and improvement of the quality of lives

Facilitate the stimulate economic activities and contribute to the national economy

Enabling creative ideas to be developed into business ideas

Need to Protect TK/IK

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Scope of the Bill1. Legislation 1

Amendment to Performers Protection Act, 1967

2. Legislation 2 Amendment to the Copyright Act,1978

3. Legislation 3 Amendment to Trade Marks Act, 1993 inclusive of Geographical

Indications

4. Legislation 4 Amendment to the Designs Act,1993

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Important Issues to Note

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Key Issues • Arguments made based on the following perceived limitations of

using IP system to protect TK/IK

– IK/TK does not meet novelty and originality requirements– Limited duration of protection which might pose problems for

rights that should be protected indefinitely– Difficulty in identifying individual creators/inventors– Those not wishing to disclose secrets but still seek protection

• WIPO conducted an analysis on the above perceived limitations and found that there is no basis for these arguments (see WIPO/GRTKF/IC/3/7: May 2002)

• Since 2002 when WIPO analysis was done, about 10 countries have moved to use IP to protect IK – Indonesia, New Zealand, United States of Micronesia, Algeria, Ghana, Viet Nam, United Kingdom, Mozambique (strategy), Senegal, Hongkong (see list provided by Prof C. Visser to PC)

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Key Issues • TK or IK is not synonymous with old –traditional refers to manner

in which such information is produced, not date on which it was produced

• Issue of date plays less role as it is under the existing IP laws – what is key is whether the information has been disclosed to the public or not which determines novelty or originality – even old IK/TK can still meet the requirements

• Traditional or indigenous knowledge does not mean it is the public domain – the fact that it is currently not protected does not make it public knowledge

• IP system currently makes provision for collective ownership and IK is no different – databases are used to assist in identification also

• The term of protection can be made longer or indefinite as may be necessary – already trade marks can be perpetual as they are renewable every 10 years, same as geographic indications

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Initial Responses

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Response 

Issues raised:

• It was submitted that the Bill is unconstitutional.

Response :

• The Bill is not contravening any sections of the Constitution. Part of the function of the certification process by the State Law Advisors is to assess the constitutionality of the Bill and this has been done.

• The tagging of the Bill has been raised as a constitutional issue and in particular the need to consult with the provinces and local communities.The essence of this Bill is to amend existing IP legislation, which will complement customary law. The Bill is tagged correctly as a Bill to be considered under section 75 of the Constitution.

• The Constitution recognizes customary law and dictates that issues pertaining to customary law must be protected.This Bill indirectly seeks to protect issues under that regime and therefore is in line with constitutional values.

• The Bill recognizes constitutional rights that are enshrined in the Constitution Act, 1996 e.g. Property rights (Section 25), Cultural rights ( Section 31).

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Issues

Issues raised:• The submission is that the Bill is contrary to international obligations that SA has to

honourResponse:• The Bill needs to comply with International obligations in particular those that

govern the current IP system namely, Paris convention (GI, non misleading of consumers), Berne convention (equal treatment of ones Nationals), Rome Convention (reciprocity).

• It should be noted that the TRIPS agreement is a conglomeration of all these conventions starting from 1967 as adopted by the World Trade Organisation Council.

• The Bill requires improvement to cater for national treatment, reciprocity, non misleading of consumers under the GI/Trade Marks regimes in accordance with TRIPS.

Response

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Response Issues raised:• Copyright protection of Indigenous Knowledge not workable

Response :• Ownership/Authorship and Lifespan/Consent

Pure folklore or original works on IK where ownership is unknown can belong to the State as per the provisions in the WIPO/UNESCO model legislation, 1982, the Tunis model and OAPI. The state has a perpetual lifespan, which translates to the lifespan of copyright being perpetual if owned by the state.

If the community is the owner then the protection can be perpetual as well. However, if derivative copyright owned by the individual, lifespan can be limited in terms of normal copyright law.

Derivative copyright from pure folklore or original works can be owned by individuals or jointly with the community or by the community itself.

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Response– Consent to use Community IP can be through community structures

such as Tribal Authorities as recognised by the Traditional Leadership and Governance Framework Amendment Act,2003 (Chapter 2), community enterprises such as trusts and/or cooperatives

– Trade marks protection can be perpetual as it is renewable every 10 years; GI’s are perpetual, Cultural Copyright/ Trade mark/Designs can also be perpetual subject to renewal

– Not all Copyright relating to Traditional works need to be in material form / written down – (see WIPO/UNESCO model)

– Protection of intangible IP is one of the areas of agreements in the Nedlac process which Parliament can consider.

– Concerns are perceived as opposed to being real

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Response Issues raised:

• The submission that collective ownership of IP is not possible

Response :• In the area of Trade marks/Designs, collective ownership is possible by making

use of Companies, Trust, Co-operatives and Close Corporations which have many shareholders/Members. Currently collective/certification marks are owned by a collective e.g. Wool mark, Parma ham, Colorado apples

• In the area of Copyright, there can be collective ownership e.g joint authors of a book or joint producers of a song

• In the area of Performers Protection, a group of performers would own the performance rights as a collective using the name of the group e.g African Footprint

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Response Issues raised:• Some definitions in the Bill are problematic

Response :• Definitions of indigenous community/traditional

performance/Author/Traditional work/Traditional IP/Beneficiaries are a few to mention

• the dti concedes that definitions are a complex matter and that the Bill needs improvement

• Based on suggestions from stakeholders, the Bill can be improved to address any apparent deficiencies, taking into account that no one size fits all approach to redefining

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Response Issues raised:

• It not appropriate for IK to vest in the National Fund which has no juristic personality.

Response :

• It was envisaged that there will be a National Trust, which has legal personality, to be the custodian of all IP/IK whose author is not identifiable.

• The community may form any business enterprise such as a co-operative, trust or a company which will represent its interest as a legal persona

• Rights can therefore be owned by communities directly and only unidentified owners’ rights could vest in the state

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Response Issues raised:• Use of the current IP system vs a sui generis system for IKResponse :• Sui generis to some may mean amending the IP legislation. Others may want

a separate piece of legislation altogether e.g. taking GI’s as stand alone namely India, whereas some may include integrate GI into IP, for instance in Trade Marks as it with South Africa – not exclusive, but complementary

• Mostly databases or registers are regarded as sui generis. There are public and private databases. Preferably both should interface with the IP system/registers. If not, the IP system requirement may be eroded e.g, novelty in area of patents maybe destroyed.Therefore there is a need for data protection.

• IP system database should not allow persons to take the knowledge from the public and claim IP without prior informed consent, beneficiary agreement , disclosure or acknowledgment where the knowledge comes from – sui generis protection in this area is critical

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Response Issues raised:

• The submission the Bill does not cater for those who do not wish to disclose their knowledge, but seek protection.

Response :

• Trade secret protection, such as in the Coca Cola recipe, can be used in this regard and is effective. The disadvantage of this may be that it is difficult to prove ownership.

• Alternatively, the databases can have different levels of protection and the knowledge can be submitted under a higher level, which is what is recommended.

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Response Issues raised:

• Lack of Dispute resolution mechanisms in Bill

Response :

• It is conceded that since this type of legislation will mostly be dealing with indigent communities, it will be unfair to expect them to go through a costly legal route to seek redress.

• It is agreed that alternate dispute resolution mechanisms should be factored into the Bill without tampering with the inherent jurisdiction of the Courts.

• In addition to Trade Mark, Copyright and Patents Tribunals, the National Council will have dispute resolution role that is not mandatory.

• Further, existing community/traditional structures under traditional leadership can accredited in the legislation to play the role and to address accessibility and affordability.

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Response Issues raised:

• The submission that NEDLAC process was not considered by the dti in the Bill

Response :

• The NEDLAC report forms part of the consultative process and it has been presented to the Portfolio Committee with clear areas of agreement and disgreements outlined.

• NEDLAC process was concluded after the Bill was approved by Cabinet for introduction

• the dti as part of NEDLAC process subscribes to the contents of the NEDLAC report

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Response Issues raised:• The submission that the Bill proposes what is contrary to WIPO.Response :• In this area, WIPO has collated information regarding the protection of IK

based on the work already done since 2000 to date in the work of the Inter-governmental Committee(IGC) on the Protection of Traditional Knowledge, genetic resources and folklore and traditional cultural expressions.

• Provisions for the protection of IK is dealt with in Article 1 regarding protection against misappropriation of IK; laws are listed in the article that can deal with protection of IK in National Legislation and IP, criminal law, fisheries and environmental laws and a special law on IK have been listed as possible legal measures or any other law or a combination of any these laws.

• Policy adopted in 2004 on IK policy recommends protection of IK under both IP and specific legislation as was done with the Patents Act and the Biodiversity Act.

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Response Issues raised:• The submission that the proposed Bill does not address cross – border

community issues as IK might go beyond boundaries of SA

Response :• IP is territorial in nature globally and Parliament is limited in its power and

cannot legislate extra territorial• Certain jurisdictions have begun talks at bi-lateral and regional level to deal

with issues that are cross border in nature.• In view of the above, it is the duty of the SA government to influence the

neighbouring states to co-operate in dealing with cross border issues.• Examples of such bi-lateral talks cross border are between Tanzania and

Kenya in relation to the Kilimanjaro/SAB Miller issue on the use of the Kilimanjaro mountain as a Trade mark

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Issues raised:

• The submission that the representation on the National Council should expressly include Traditional Leaders

Response :

• It is conceded that the role of the National Council will be better enhanced and effective if traditional leadership is represented.

• The existing traditional structures can be recognised in the Bill in order to promote accessibility, effectiveness and

efficiency in the protection of IK

• Traditional authorities for instance are custodian of important information about communities

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Response Issues raised:

• The submission that traditional leadership should play a role in the identification of communities and the creation of Trusts

Response :

• It is conceded that the role of traditional leadership structures cannot be over emphasised as they are the custodian of information of citizens within their jurisdiction.

• They also play a meaningful role in facilitating speedy dispute resolution within the system of accreditation.

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Response Issues raised:

• The submission that the Bill is not providing for retrospectivity, which other stakeholders feel is important in this area given the historical misappropriation

Response :

• The Bill may facilitate agreements and payment of royalties going forward, which the parties can agree to

• At NEDLAC, a proposal was agreed upon to propose inclusion of transitional provisions that will facilitate this transition

• However, the issue of retrospectivity is in the discretion of Parliament depending on merits of the matter at hand.

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Response Issues raised:

• The submission that there should be regulation of Collecting Societies and distribution of royalties

Response :

• In principle there should be a clause on the regulation of Collecting Societies on IK matters and beyond, and regulation of royalties and distribution thereof.

• This will ensure that IK holders receive compensation of their IP/IK rights. Also, the existing problems regarding distribution of royalties can be addressed.

• At NEDLAC, it was agreed that a proposal will be made for provisions to be added as section 9B and C, without tempering with section 9A

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Conclusion• Commentators that advocated for sui generis seem not have considered

the policy of IKS of 2004 – they still argue using the perceived limitation without consideration of practical experiences so far and thus misleading

• More than half of presenters support the policy imperatives protecting IP/IK and the Bill, subject to improvements - but in particular CONTRALESA, ORANIA movement and the House of Traditional Leaders

• There is a view that the Bill is a starting point to protect IK and that other means like sui generis should, as per the 2004 IKS Policy, be pursued and co-exist with the IP system

• It being recognised that the IP system focuses on commercialisation, while other areas could address issues of promotion and preservation – process has commenced in SA already

• The Bill will need improvements in the areas identified and creation of framework for supportive mechanisms within communal structures like trusts, co-operatives and alternate dispute resolution.

Thank you!!!