BOKISSONTHRONE: PROTECTING IDEAS CAN BE A COSTLY AFFAIR

THE recent Constitutional Court judgment ordering Vodacom to compensate Nkosana Makate for his "please call me" idea is a rare victory for the underdog.

While the issues before the court were not strictly related to intellectual property law, the matter is of huge interest for innovators and inventors.

Nkosana Makate at the Constitutional Court in Braamfontein, Johannesburg.

Most South Africans are aware of the existence of intellectual property but have scant knowledge about the types in SA, when they apply, or what can be done to register or enforce intellectual property rights.

Although the number of intellectual property disputes adjudicated daily in the courts is very small, they arise all the time and most are settled between the parties before reaching court.

The Vodacom judgment shows that the courts will uphold the rights of inventors and other intellectual property owners, but — obviously and somewhat sadly — only when the inventor has the means to fight the matter in court.

Intellectual property litigation is extremely costly and not many can afford to use the legal remedies available to them. It is expensive particularly because most forms of intellectual property — for example, patents, trademarks and designs, but with the notable exception of copyright — must be registered to be enforceable, and that is costly.

Most forms of intellectual property are territorial and must, therefore, be registered in each and every country where it will be used.

Although it is not very expensive to register patents, trademarks and designs in SA, repeating the exercise abroad can be very costly.

Once an idea, concept, or invention has fallen into the public domain, it is extremely difficult to enforce and protect ownership.

For example, disclosure to the public (anywhere in the world) would destroy the novelty of an invention that would otherwise qualify for patent protection.

The same applies to designs, although there is a six-month grace period following any public disclosure during which design applications may still be filed.

One of the main challenges faced by individuals is finding the financial resources to protect and exploit their ideas commercially.

A further complication is that in most instances, individuals need to approach companies, government departments and other organisations for assistance with funding to further develop, protect and commercially exploit an idea.

The risk they face is that the organisations may steal the idea. If a disclosure to another party is not made in confidence, it can also destroy the novelty of an invention.

These risks can be mitigated by requiring potential funders or partners to sign a nondisclosure agreement before disclosing any idea to them.

However, most big companies and government departments and institutions are unwilling to sign such agreements.

If a potential funder refuses to sign a nondisclosure agreement, the inventors should, at least, make it clear that any disclosure they make is confidential.

This will help preserve the novelty of any patentable invention that may be disclosed.

Individuals need to be aware of intellectual property law principles — the difference between the forms of intellectual property and what their rights are.

Employees should understand the terms of their employment contracts and the intellectual property law principles relating to ownership of works or inventions created or conceived in the course of employment.

Most employment contracts contain a provision, stating that any works or inventions created or conceived during the course and scope of their employment will belong to the employer.

Both the Copyright Act and Patents Act in SA also provide that works and inventions that are created or devised by an employee in the course and scope of his or her employment with a firm will be owned by the employer.

In the "please call me" case, Makate was employed by Vodacom as a trainee accountant, so his development of the product would not have fallen within the course and scope of his employment, which means Vodacom would not have relied on the provisions of the Copyright Act or the Patents Act to claim ownership of the invention.

The Patents Act also states that any provision in an employment contract that requires an employee to assign ownership of an invention developed outside the course and scope of employment to his employer is null and void.

Individuals also need to be aware that copyright is a strong instrument that can be used to protect intellectual property.

Copyright subsists in various types of works including literary works (such as books, essays, poetry and lyrics) and artistic works (including photographs, drawings and paintings).

In SA, it is generally not possible to register copyright so that the right can be enforced without the need to incur registration costs.