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?

©
® DESIgN INSTITuTE
TM
PAT
INTEllEcTuAl ProPErTY rIghTS DISclAIMEr

Inventors and designers whose business it is to ISBN 978-0-626-21033-5

generate intellectual property should acquaint them-
selves 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.

This booklet is based on information available in

Your guIDE To INTEllEcTuAl
2008 but should not be treated as a substitute for
ProPErTY rIghTS IN SouTh AfrIcA detailed advice from a professional legal advisor.
It is published without responsibility on the part of
Edited and published by the SABS Design Institute.
the Design Institute, which cannot accept account-
ability for the consequences of anyone acting on
contributers:
the information contained herein.
— Intellectual property law information researched
and revised by AJS Dunlop, SA Institute of Intel-
lectual 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: design@sabs.co.za
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

1

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

 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 com-
mercial 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
value that you can sell or licence to powerful cor-
The use of intellectual property rights in the global
porations. Even powerful corporations need to be
marketplace is a major facet of business today. The
2 able to prevent unauthorised use and resist power-
leaders in exploiting this source of wealth are prob-
ful competition.
ably the USA and South Africans are fast learning
to enter the game.
Your new product design may entail features that
qualify for protection under one or more of the four
Your inventive ideas, works and product designs,
major fields of law that govern intellectual prop-
whether aesthetic or functional in nature, constitute
intellectual property. The value of intangible assets erty in South Africa and abroad. The provisions of

should not be underestimated – but they must be
protected by law. How often has the inventor not
made a cent, while those who followed him made a
fortune from his invention? It is essential that legal
protection be obtained to ensure that you, the crea-
tor of the design and the investor who finances
these may overlap to cover different aspects of the
same article or product and while there are differ-
ences of detail in foreign countries, the broad prin-
ciples are the same. Taken together, the different
laws and international agreements provide a system
of design protection. In addition, your design may
also form the subject for protection against passing-
off or unlawful competition, in accordance with the
common law in some countries.
In South Africa, the intellectual property division of
CIPRO, the Companies and Intellectual Property
Registration Office, is responsible for the registra-
tion of patents, trademarks, designs and copyright.
The division keeps records of all patents, trade-
marks, designs and copyright that are lodged in
South Africa, including details of the owners/pro-
prietors. CIPRO came about after a merger between
the former South African Companies Registration
Office (SACRO) and the South African Patents and
Trade Marks Office (SAPTO).
Researchers and inventors can do searches at
CIPRO’s Paper Based Disclosure Centre. Appli-
cation forms for the different kinds of protection
are available at these offices or can be requested
from CIPRO by mail or telephone. These can
also be downloaded from the CIPRO website at
www.cipro.gov.za.
In this publication the different fields of law that
you may use to protect your new product designs
will be considered separately, in outline. While every
effort has been made to ensure that information is
correct, no responsibility can be accepted for errors
or their consequences. Also, it is not possible to
3
deal with the many laws fully and it is essential that
you consult an expert for details.
A short and simplified overview of the product devel-
opment process has also been included, as well as
explanation of the role of standards in the design
process.
 PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY
CoPYRIGHt
The Berne Copyright Convention covers most coun-
tries of the world, including South Africa and lays
down basic principles of copyright law that all mem-
ber 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?
The following works, if they are original, qualify for
copyright: Literary works, musical works, artistic
works, cinematograph films, sound recordings,
broadcasts, programme-carrying signals, published
editions and computer programs.
The category of copyright works most relevant for
4 product design will be artistic works. ‘Artistic work’
is defined to include drawings (including drawings
of a technical nature or any diagram, map chart or
plan), paintings, sculptures, engravings and photo-
graphs, all irrespective of their artistic quality; works
of architecture; and works of craftsmanship (includ-
ing works of artistic craftsmanship as well as works
of craftsmanship of a technical nature). ‘Drawings’
would thus include engineering and industrial de-
sign drawings. The concept ‘works of craftsman-
ship’ would include three-dimensional articles, for
example prototypes and models prepared in the
course of design work.
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 copy-
right 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 re-
duced to material form (including in a computer).
Who is protected by copyright?
You, the author or creator of a copyright work will
usually become the first owner of the copyright in
the work, unless you were in employment under a
contract of service or apprenticeship, in which case
your employer becomes the owner. (But see further
below “Who owns Copyright“.)
Copyright can be assigned (ie transferred) or li-
censed, but an assignment and an exclusive licence
have to be in writing.
How does copyright protect you?
Copyright arises automatically when a work is made,
in all Berne Convention countries.
Copyright protection affords you, the copyright own-
er the right, generally speaking, to prevent others
from making a reproduction (or copy) of the copy-
right work, from publishing the work, and, in some
 instances, from offering it for hire by way of trade.
A person who carries out any of these acts without
your authority commits an act of direct infringement
of your copyright in the work. To constitute a direct
infringement of copyright, actual copying must have
taken place, and the reproduction must be substan-
tially similar to the original work.
The protection afforded you also extends to so-
called acts of indirect infringement, which will occur
where a person deals in certain ways with copies of
a copyright work, knowing that they are infringing
copies. These ways include importing, selling or
dealing in the infringing copies or acquiring a com-
puter program.
Copyright law protects the reputation and identity
of the author, by giving a right of action against
distortion or mutilation of the work in a way which
is to the detriment of the honour or reputation of
the author. This applies, even if the ownership of the
copyright resides in another person or company.
This protection of the author can not be taken from
him or her.
Are there any exceptions to copyright protection?
In the usual course of events, it will also be an in-
fringement of the copyright in a work if a reproduc-
tion of another reproduction of the work is made.
However, important exceptions apply to spare parts
throughout the world and in South Africa three-
dimensional products placed in the market by
authority of the copyright owner and which are
primarily utilitarian and have been made by an
industrial process, are excluded from copyright.
Copying these does not infringe copyright in the
original work, but taking legal advice beforehand
is well advisable because this area of copyright law
is controversial and very complex.
A general exception is research or private study or
personal use and fair review or criticism or reporting
of current events.
Who owns the copyright?
As mentioned above, the author is the owner, unless
employed in a contract of service or apprenticeship.
Where the employer is the proprietor of a news-
paper or magazine, the proprietor owns copyright
only for purposes of publication.
For works created between January 1, 1979 and
May 23, 1980, these exceptions do not apply in
South Africa, unless the work was done for the state
or an international organisation.
Another exception is where certain copyright works 5
(namely photographs, painted or drawn portraits,
films, sound recordings and gravures) are made on
commission and on payment of money, in which
case the person who commissioned the work be-
comes the owner of the copyright.
The effect of these exceptions as to ownership
can be changed by agreement in writing between
the parties concerned, i.e. assignment.
 How long does copyright protect you?
Copyright is immediate and for artistic works (ex-
cept for photographs), copyright endures for the
entire lifetime of the author and for a period of 50
years after his death. In the case of photographs
(also cine films and computer programs), the period
of copyright is 50 years after the work is first law-
fully made available to the public.
What will copyright protection cost you?
There is no registration fee, since copyright arises
automatically by law, this is a ground principle of
the Berne Convention. However, some countries
(eg USA) allow an optional registration, to help prove
and enforce your copyright there. Only film copy-
right can be registered in South Africa.
What are the registration requirements for
copyright?
No prior registration or any other formality is re-
6 quired (besides preferably having the date, your
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?
The list of Berne Convention countries is obtain-
able from the Government Printer, or consult a
specialist lawyer. The few non-Berne Convention
countries may well have copyright law available
to you, but you would have to investigate.
Tips and comments on copyright protection
If you forget to register your design, then copyright
may save the day if you habitually keep all original
drawings, date them and have them witnessed
and have the copyright symbol and notice on all
drawings.
It is preferable to use the copyright warning notice.
The abbreviated form is the year of first publication
of the work followed by the encircled ©, and the
name of the copyright owner. Very often the words
“ALL RIGHTS RESERVED” are added to the notice
(this is actually required in most South American
countries).
When subcontracting work, check that the terms
of the contract provide in writing that you, as the
commissioner become the copyright owner or are
acknowledged as the existing owner.
DesIGn ReGIstRAtIon
Design law varies somewhat from country to coun-
try, but the key feature common to all, is that reg-
istration 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-
tion in your home country (or a first registration
anywhere).
What does design registration protect?
Whereas original and innovative design may be
protected under the copyright, patent and trademark
laws, a specialised law for design protection is
discussed here.
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 pro-
tection 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 pro-
tected by a specialised law for design, but where
it is, it goes under different names, such as “ge-
brauchsmuster” – Germany, “utility model” – France,
“Petty patent” – formerly in Australia, now substituted
by a new law for “minor inventions”. Aesthetic design
is protected almost in all countries and in some
the distinction between functional and aesthetic
design is not so strictly drawn. Expert advice will be
essential. In South Africa the register of designs has
two parts, part A for protection of aesthetic features
of designs and part B for protection of functional
features of designs. Many designs are accordingly
registered in both parts A and B. Designs registered
before 1 May 1995 are only in part A because part
B was only introduced after this date.
Who is protected by design registration?
The categories of registered design protection
An aesthetic design registration protects the fea-
tures of appearance of an article, ie the features
of shape or configuration or pattern or ornamen-
tation (or any combination of these), which appeal
to and are judged by the eye, as shown in drawings
or photographs of the registration.
A functional design registration protects the fea-
tures of an article, which are necessitated by the
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 inter-
mediate 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, electromag-
netic or optical elements and circuitry are integrally
formed, in accordance with a predetermined topog-
raphy in a semi-conductor material. An integrated
circuit topography consists of the pattern, shape of
configuration of the three-dimensional disposition
of the electrical, electromagnetic or optical elements 7
and circuitry in an integrated circuit.
A mask work consists of a pattern of an image how-
ever fixed or encoded, having or representing at
least part of an integrated circuit.
You, the owner of a registered design may apply
for the monopoly right, or a person or company
for whom you made it in the course and scope of
your employment, or to whom you assign it.
 How does design registration protect you?
You have a monopoly right to prevent others from
making, importing, using or disposing of in South
Africa an article which falls within the class in which
a design is registered, incorporating the design or
a design not substantially different. It is not neces-
sary that the owner of the design prove that the
infringer had actually copied his design.
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 sur-
render of any infringing product or article or of any
product of which the infringing product forms an
inseparable part.
What are the conditions for a valid design
registration?
8 lying invention. Functional and/or aesthetic design
An aesthetic design has to be new and original
whereas a functional design has to be new and not
commonplace in the art in question. A design is
new if it does not form part of the state of the art
immediately before the date of application for the
registration or the release date, whichever is the
earlier. Where the release date is the earlier, the
application for the registration thereof must be
lodged within six months of the release date. The
release date is the date on which the design was
first made available to the public with the consent
of the proprietor or his predecessor.
The state of the art comprises all matter available
to the public (whether in South Africa or elsewhere)
by written description, by use or in any other way
as well as matter from prior pending or convention
applications.
Both aesthetic and functional features of a single
design applied to an article may be protected by
separate design registrations.
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 sub-
ject 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.
Design protection is not for inventions
Broadly speaking, a patent protects an invention in
many embodiments, which incorporate the under-
is applied to a commercially suitable embodiment
in order to bring it to market acceptance.
How long does design registration protect you?
The maximum duration in South Africa of protection
for an aesthetic design is fifteen (15) years where-
as the duration for a functional design is ten (10)
years from registration or from the release date,
whichever is the earlier. Annual renewal fees must
be paid after the third year. The fees may be
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-
tional and where no undue delay has occurred in
the making of the application for restoration.
Abuse of design rights
Compulsory licences are possible in the case of
abuse of rights, eg. failing to make the design avail-
able 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
and explanatory statements and an abstract requires
a further fee. The first renewal fee is R120 and the
last for functional designs is R110, for aesthetic
designs R149. A patent attorney would charge
about R725 for maintaining a reminder system for
you and renewing the registration for you (2008
fees). The attorney’s fees include not only profes-
sional advice but also the creation of a file, prepara-
tion of documents and drawings and the running of
a maintenance and reminder system for timeous
renewal of registration fees.
What countries are covered by design
registration protection?
A South African registered design has effect only in
the territorial area of South Africa. To obtain pro-
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 corre-
sponding 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 speci-
fied 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 ad-
9
dress list inserted in this Guide .
It is probably safer to keep new designs confiden-
tial until a registration application has been filed,
however, if you wish to use the 6 months grace
period it would be wise to discuss this with a patent
attorney. Employees and others should be required
to sign confidentiality undertakings.
Once your design is registered, it should be marked
with the words “registered design” and the registra-
tion number; otherwise you may find that infringe-
ment damages are not recoverable. It is a criminal
 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,
ensure that the term of the contract correctly re-
flects your intentions and your rights to the design.
Basic procedure for design registration
A private individual or a company may apply. The
applicant may file the registration him or herself or
by making use of the services of a patent attorney
firm. It may help you to have a look at the Patent
Journal before you fill in your application forms.
The Patent Journal is a monthly publication with bib-
liographic information, accompanied by a written
note and drawings or images concerning registra-
tion of trademarks, patents and designs. You can
order the Patent Journal from Government Print-
ing Works, Bosman Street, P/Bag X85, Pretoria
0001.
Representations of the design must be filed on A4
size paper. It can be drawings or photographs. Draw-
ings are preferred as far as possible, without expla-
nations or side scripts. The applicant may indicate
which view is shown, for example front view, side
view, etc. Photographs must be studio photographs.
No background details or person must be in the pho-
tograph. It must only show the object that needs
to be protected. If other objects need to be in the
picture for indication purposes, a disclaimer must
be written in the Explanatory Statement to disclaim
protection of that part. There may be more than one
view on a page, but seven identical clear copies
must be submitted of every page, for example if
there are three different pages – 3 x 7 copies. On
one of those pages, one picture that shows the
object the best, must be attached to D8 “for pub-
lication” to be advertised in the Patent Journal.

If the applicant wishes to register the design in other

The basic procedures to register are as follows: countries as well, he/she needs to do so within six
months from the filing of the South African filing by
10
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 at-
PAtents
torney to do it on their behalf at extra costs.

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?
The applicant for a patent must be the rightful owner
of the invention; eg he must be the inventor, the
assignee of the inventor or the inventor’s employer
if the invention was made in the course and scope
of employment.
How does a patent protect you?
A patent is a monopoly right conferred by the State
for a limited period of time. Hence most commonly
a patent is a national right limited to the nation con-
cerned, but there are a few regional patents, one
for Europe, one for “English-speaking” African coun-
tries and one for “French-speaking” African coun-
tries. A patent for “Europe” now extends to numerous
East European and Mediterranean countries as
What will patent protection cost you?
well.
A patent gives you the right to exclude others from
making, using, exercising or disposing of your in-
vention, so that you can enjoy the whole profit and
advantage accruing from the invention for the dura-
tion of the patent.
Are there any exceptions to patent protection?
Certain categories of inventions excluded from pat-
ent protection in most countries are the traditional
copyright works or any aesthetic creations; a meth-
od, scheme or rule of doing business or playing a
game; a scientific theory or mathematical method;
the presentation of information; a computer program,
and methods of medical treatment. Sometimes ex-
cluded categories can be indirectly protected by mo-
nopolising the technology necessary for them.
How long does a patent protect you?
A provisional application is available in South Africa
and a few other countries, including UK and USA,
and obtains provisional protection for a period of
twelve months in all Paris Convention countries
(about 154); this can be followed by a complete
application in selected countries (before the expiry
of the twelve-month period), which provides pro-
tection for generally 20 years from the date of filing
the complete application, renewable usually from
the 4th year, in each country. However, increasingly
South Africans are choosing rather to obtain foreign
patent rights by entering the PCT (Patent Co-oper-
ation Treaty) system, for which see below.
If you file the provisional patent application in South
Africa yourself, a R60 revenue stamp will suffice.
If the provisional patent is filed by a professional
(which is preferable, to avoid subsequent invalidity
or complications arising from inadequate descrip-
tion or too narrow a definition of the invention), the 11
fee might be anything between about R5 000 and
R7 000 or more, depending on the complexity of the
invention.
The complete patent filing in South Africa, which
must be done by a patent attorney or patent agent,
will cost between R7 000 and R10 000 or more,
including official fees. The renewal fee, payable
annually from the 3rd year onwards, is on a sliding
scale from R130 to R206 for official fees and
R725 for a patent attorney’s fee. As in the case of
design registration, the patent attorney’s fee will
 include professional advice, preparation of specifi-
cation drawings and formal papers and the imple-
mentation of a system to remind you and making
the payments.
What are the registration requirements for a
patent?
You, the inventor, or your patent attorney can apply
to the Registrar of Patents at CIPRO for a patent.
Application for a patent can be made by way of a
provisional application, to obtain provisional protec-
tion, followed by a complete application (this must
be done by a patent agent or a patent attorney).
Alternatively, a complete patent application may be
filed in the first instance. (See address list, inserted
in this Guide).
What countries are covered by patent protection?
A South African patent has effect only in the territo-
rial area of South Africa. If you require protection in
other countries, you must file separate applications
12
in such countries. An exception is the regional
patent for Europe and regional patents in Africa.
Your South African patent application can serve
as a basis for claiming so-called convention priority
in respect of foreign applications in the majority of
other countries. You must file such foreign appli-
cations within twelve months of your first South
African application.
An important alternative, used increasingly since
South Africa joined the PCT in May 1999, is to
extend the period of provisional protection from
12 months to 30 months, internationally, by filing a
PCT (Patent Co-operation Treaty) patent applica-
tion. Rights are provisionally reserved in 135 coun-
tries and the benefit of an international search
and preliminary examination is included. The ad-
vantages include deferring the costs of filing in
foreign countries, an early reliable and impartial
indication of validity (at the 16th –17th month), with
opportunity to amend if it is necessary, which can
form a basis for confidence by investors. At the end
of the PCT procedure the patent application will be
in a better condition to go through the examination
successfully in each country in which you finally
patent.
Tips and comments on patent protection
The term “new” means that the invention or infor-
mation about the invention should not have been
available to the public anywhere in the world. Ac-
cordingly, it is of vital importance that your patent
application be filed before your invention is made
known to members of the public.
You should neither discuss your invention nor show
it to anyone who is not legally bound, by contract
or by the nature of your relationship with them, to
keep it confidential. Disclosure of your design or
invention to a professional advisor, eg a patent
attorney, is not a premature disclosure because he
owes you a legal duty of confidentiality, and what
you tell him will be privileged in law.
The filing of a provisional application in the first
instance has several advantages, including that
it can be filed relatively quickly (since only a pro-
visional specification is required to be filed), and
it secures a filing date yet affords a twelve-month
period during which the novelty, technical merit and
commercial prospects can be further investigated,
before the application is completed.
This twelve-month period may be far too short for
developing the invention into a product. Hence the
value of the PCT procedure mentioned above,
which gives 30 months. In addition, it may be advan-
tageous not to file a patent immediately, provided
that the novelty of the invention will not be adverse-
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 appli-
cation 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 ex-
pired, it may be possible to re-file your application.
This, however, carries the disadvantage that you
lose your original file date, which can have serious
consequences. Do not take this decision lightly and
preferably seek professional advice.
In some (rare) instances, it may be better not to pat-
ent your discovery or invention but to continue to
keep it secret, eg as in the case of the formula for
Coca-Cola. This enables you to have monopoly
rights well beyond the 20 years of cover granted by
the patent! This option is viable only if it will not
be possible for outsiders to analyse and deter-
mine your invention, or for insiders to reveal it.
The provisional patent application secures the date
and a right to the invention but does not guarantee
that your claim is legitimate. No search is done by
the Registrar of Patents in South Africa to ensure
that your idea is unique and there could well be
another similar invention, either local or overseas.
The onus is entirely on you, the applicant for the
patent, to look into this question. This means that
patents may be granted in South Africa for inven-
tions that are not new and that may even have been
patented. It is worth the additional time and costs
to conduct an international search to ensure the
uniqueness of your invention even before filing the
provisional – also this could save you from re-invent-
ing the wheel. South Africans now have good access
via Internet, to international patent databases (see
the addresses under the heading “Internet Search-
ing 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-
liminary search, which is good insurance against 13
adverse results later.
Five years after the date of application for your pat-
ent in South Africa, any person can obtain details of
search results in any foreign patent applications you
may have filed. Publication of granted foreign pat-
ents usually include details of prior art that was con-
sidered before the grant to you.
Searches in the markets where you intend to sell,
are necessary if you want to be sure that in manufac-
turing you do not infringe someone else’s patent.
 It is quite possible to find that a product is protected
in some countries and not in others.
Inventions and supporting literature should all be
marked with “patent applied for” or “patent”, with
the relevant patent number, to ensure that infringe-
ment damages can be recovered. Falsely claiming
that patent rights exist is a criminal offence.
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 pat-
ent rights. It is a manual search that the applicant
can do him or herself and costs R4. A patent attor-
ney may also be appointed to do this on the appli-
cant’s behalf. It is also advisable to do searches on
other countries’ patent websites to ensure as far pos-
sible, 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
Step 2: The applicant can apply for provisional pat-
ent rights by completing a set of application forms,
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
the application forms. Neat drawings in black ink (on
A4 paper) may also be included to help with the
description of the invention. The wording of the
description is very important and the description
may not be altered or added to after it has been
lodged at CIPRO. The protection of the patent will
depend on the wording used in the description.
The provisional patent will be valid for a period of
12 months. In these 12 months, the patent may be
manufactured and marketed. Any time during these
12 months, the final patent may be filed when the
applicant is confident that the invention is suc-
cessful.
A private individual or a company may apply for a
patent. The inventor/s can only be indicated as natu-
ral persons and not a company. If a company is the
applicant or if the applicants differ from the inven-
tor/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
if the application was filed on a later date). One may
post-date up to six months. The cost is R50.
}
Step 3: The final (complete) patent can be filed in
South Africa only or with the PCT international filing
system.
The SA Patent Act requires the signature of a regis-
tered patent attorney on the specification. Through
 the PCT system, an applicant may apply him/her-
self by doing an international reservation in mem-
ber countries of PCT. If an applicant applies in a
private capacity, the applicant will receive a huge
discount on the reservation fee. The reservation
fee is roughly ± R6000 (including the discount). Later
when it reaches the national phase (where the
application is filed in the different countries), fees
are paid as set by each country, around R 35 000
average.
After the application has been accepted and granted
(advertised in the Patent Journal), the patent needs
to be renewed annually from the third year to keep
it in force. The renewal may be paid by the owner
of the patent him/herself or a patent attorney firm.
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
tRADeMARks
What is a trademark?
A trademark is a means of identification of your
goods and services and serves to distinguish them
from the same kind of goods and services supplied
by others. Trademark law in some countries, includ-
ing South Africa also protects collective marks and
certification marks.
A trademark may consist of any sign capable of
being represented graphically, including a device,
label, name, signature, word, letter, shape, con-
figuration, pattern, ornamentation, or a container
for goods, or any combination of these. A trademark
should be capable of distinguishing your goods or
services because of its inherent nature or as a result
of use.
A certification mark must be capable of distinguish-
ing goods and services in respect of kind, quality,
quantity, intended purpose, value, geographical
origin or other characteristics of the goods or servic-
es, or the mode or time of production of the goods or
of rendering of the services.
A collective mark is one capable of distinguishing
goods or services of persons who are members of
any association from goods or services of persons
who are not members.
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
consistent quality.
How does a trademark protect you? 15
Although you can devise and use your own trade-
mark without registering it, its main benefits accrue
through registration. A trademark registration entails
numerous advantages for you, e.g. a trademark reg-
istration affords you, the owner, the right to prevent
the unauthorised use by another party of an identical
or confusingly similar trademark in relation to goods
or services that are covered by the registration and
also similar goods and services. It also acts as deter-
rent to prospective infringers; it enables proceed-
ings for infringement to be instituted in terms of
 the Act; it can form the basis of an objection to an
application by another to register a confusingly
similar trademark.
Provision is also made for infringement by use of
a trademark, which is identical or similar to a reg-
istered trademark if that use would take unfair
advantage of or be detrimental to the distinctive
character or repute of a registered trademark.
Are there any exceptions to trademark
protection?
A mark may not be registered that is not capable
of distinguishing goods or services or which con-
sists exclusively of a sign which may serve in trade
to designate the kind, quality, quantity, intended pur-
pose, value, geographical origin or other character-
istics of the goods or services. Nothing offensive,
immoral, confusing, or indicating government pa-
tronage may be registered. Infringement will not
arise in the case of bona fide use of names and
descriptive material, reference to the indicated
purpose of goods and services, including spare
16
parts and accessories, parallel importation, and
the use of utilitarian features.
How long does a trademark protect you?
Protection is for an indefinte period, provided that
you pay the renewal fee every 10 years.
What will trademark protection cost you?
An application for registration currently costs R3 559
per class and renewal costs R1 910 (attorneys’ fees
included). If you do it yourself the revenue stamps
cost R590 for a filing and R260 for renewal (2008
fees). Note that, as mentioned with design regis-
tration and patents, there are various advantages
to be gained by obtaining professional advice.
What are the registration requirements for a
trademark?
Registration is achieved by filing an application at
the Trademarks Office in the country in which you
intend to market products under your trademark
and require protection, e.g. in Pretoria, for the South
African market. Trademark rights arise either by
registration or by the use of the trademark in the
course of trade for a given period of time. If a regis-
tered trademark has not been used for a period (in
South Africa it is a period of five years), the regis-
tration can be cancelled at the insistence of an
interested party. (See address list, in the insert of
this Guide).
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-
munity Trademark) system, to cover countries of
the European Union and under the Madrid Protocol
to cover a series of countries in the world. South
Africa intends to join the Madrid Union, perhaps in
the course of the next year or so. These opportuni-
ties are not, however, free of potential difficulties
and you will need to consult a specialist, such as
 an attorney who has obtained the Trademark Practi-
tioner Certificate from the Institute of Intellectual
Property Law. A South African application can again
serve as a basis for your claiming convention priority
in respect of corresponding applications in other
countries, provided such foreign applications are
filed within six months of the South African applica-
tion.
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 coun-
tries (eg USA) use in commerce.
The proprietor of a trademark may allow a licensee
to use his mark, but must ensure that no public
Basic procedure for trademark registration
deception or confusion will arise as a result. Regis-
tration as a “Registered User” is advisable.
A trademark may become non-distinctive where
everyone uses it as the accepted description of a
product or service. If it becomes customary in cur-
rent language, it will no longer be validly registered.
A trademark is an adjective and is not used as a
noun or verb. It should, therefore, be followed by the
generic name of the product. Trademarks must be
distinctive e.g. in their colour, typeface or background
or any combination of these. If they are registered,
“registered trademark” should be indicated, or an
abbreviation, eg an encircled ®, given.
There are various classes in the Trademarks Reg-
ister and a separate application has to be filed for
each class of goods or services claimed.
A trademark, logo, corporate identity or brand image
is probably the single most valuable marketing tool
that a business can have. It is therefore vital that
this asset is understood and properly protected.
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 regis-
tration of trademarks. Enquire at CIPRO for more
information in this regard.
The person must make sure that he/she chooses
a unique NAME for the product or service. It must
not be descriptive of what the product is. 17
Step 1: It is strongly advisable to apply for a special
search at the Trade Mark Section of CIPRO. Form
TM2 needs to be completed and a fee of R85 is
payable. If there is a logo and/or slogan involved,
this must also be indicated on the form TM2. The
classification can be determined from the NICE
Classification (a link is provided on the CIPRO
website to this class list). Each different name and
different class will be a different search and reg-
istration. The search result is usually available in
eight working days.
 A spot search can also be done at the office at a
cost of R4 per name, but this is only for an identi-
cal search and it is NOT advisable to file a regis-
tration based on the result of a spot search. The
main purpose of this spot search is only to nar-
row 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
for registration of the trademark by completing form
TM1 in triplicate. The government fee is R590.
If a logo is involved, it must be attached in the block
on the form TM1. A registration number is allocated
the next working day. The person may trade with
the name with a TM sign next to the name.
}
Step 3: After examination of the mark (presently
in 36 months time from filing the registration), an
acceptance notice will be sent to the applicant.
18 This must be taken to the Government Printer to be
advertised in the Patent Journal for three months
for possible opposition. If there is no opposition,
the certificate will be issued and the TM sign may
be replace with the ® sign.
The trademark must be renewed every 10 years
to keep it in force. If the applicant wants to register
the mark in other countries with priority claim, they
must do so within six months of the SA registration
by making use of a patent/trademark attorney firm.
CoUnteRFeIt GooDs
What does the Counterfeit Goods Act protect?
This law in South Africa (from 1 January 1998) intro-
duces measures aimed against trade in counter-
feit goods. Such laws already exist in first-world
countries, eg the UK.
Who is protected?
You, the owner of trademarks, copyright works and
certain merchandise marks are given more effec-
tive ways than were available in the past to prevent
piracy of your rights in counterfeit goods.
How does the Counterfeit Act protect you?
The Act prohibits dealing in counterfeit goods by:
• being in possession of or controlling counterfeit
goods;
• making counterfeit goods;
• selling, hiring, bartering, exchanging or offering
counterfeit goods;
• exhibiting or distributing counterfeit goods, for
trade purposes, or in any prejudicial way;
• importing or exporting in, out or through SA; or
• disposing of counterfeit goods.
The Act empowers inspectors and police, who have
a warrant, to enter premises, stop a vehicle if neces-
sary by force, seize, remove and detain counterfeit
goods, collect evidence, search and terminate coun-
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
difficulties of limited space are being overcome, to
make this law effective.
PRoteCtIon bY otHeR LAws
In addition to the various forms of protection dis-
cussed so far, a product design may enjoy some
measure of protection on the basis of the principles
of common law (law not found in Acts of Parliament)
in common law countries and in certain other laws.
Under common law you, the creator of a design,
may be able to prevent others from exploiting a con-
fusingly similar version of your design on the basis of
PRoteCtIon eLsewHeRe
passing it off to the public as yours; or prevent others
from reaping the commercial benefits and advan-
tages of your design by appropriating to themselves
a substantially similar design and exploiting it in cir-
cumstances 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 com-
petitor), through his wrongful conduct, will be liable
for damages, and his conduct can be stopped or
prevented by way of an interdict.
The following are situations where your rights may
be wrongfully affected:
• where someone imitates the distinctive appear-
ance, trade name, get-up, etc, of your products
so as to deceive or confuse the public into taking
his products as those of yours, ie so-called pass-
ing off;
• where someone deceives the public as to the
quality, extent, nature, etc, of his own goods or
service;
• where someone carries on his business in con-
travention of the law;
• where someone spreads disparaging and un-
true allegations about your goods, service or
business;
• where someone acquires and uses (without au-
thority) your confidential information or trade
secrets; and
• where someone appropriates to himself the fruits
of your skills, labour and expense, eg by too
closely copying his competitor’s (your) product
designs.
The cost for South Africans of obtaining legal protec-
tion elsewhere requires a carefully planned strategy
including marketing, finance and cash flow projec-
tions, 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 19
African or overseas countries, which operate inde-
pendently when it comes to the protection of intel-
lectual property. For this reason you need to file
patents and register trademarks and designs sepa-
rately in these countries, as has been discussed.
Note that some countries are signatories to inter-
national protection agreements and others not. This
means that if they are signatories, they will honour
the date of your filing or registration in this country,
provided that you lodge your application for protec-
tion in their country within the prescribed time.
 For those countries that are not signatories to any
international agreements relating to protection of
intellectual property, you need to register or file
separately in those countries. Your nearest patent
LICenCes, AssIGnMents AnD otHeR AGReeMents
Once a product design has been completed, it is
likely that you, the designer, will have to enter into
one or more agreements with others in regard to
the further exploitation or commercialisation of your
design. Although a written contract is not always
compulsory, it is always advisable to reduce the
terms and provisions of an agreement to writing. It
is preferable to obtain the assistance of a lawyer in
this regard, but whether or not you get a lawyer,
it is of the greatest importance to put it in writing.
The following types of agreements often arise with
regard to novel products:
• An assignment agreement, when you, the origi-
nal designer, decide to sell your design and all
rights in it to someone else, so that they will be-
20 come the new owner of all the rights, and will
exploit the design for their benefit, usually upon
payment of a lump sum, but sometimes coupled
with a continuing royalty payment.
note: An assignment of copyright must be in
writing.
• A licence agreement, where you, the original de-
signer, decide to retain ownership of this design
and the rights therein, but licence or authorise
someone else to be responsible for the com-
mercialisation of it, usually upon payment of a
continuing royalty to you.
attorney will be able to give you more information
on such countries. Alternatively, contact the Patents
Office in Pretoria (see address list, inserted in this
Guide).
• A confidentiality agreement, where you, the orig-
inal designer, need to disclose confidential infor-
mation to someone else, eg to acquire technical
assistance, financial assistance, marketing ad-
vice, etc, and you wish to safeguard your rights.
• A joint venture agreement, where you, the origi-
nal designer, wish to enter into a partnership or
other continuing business relationship with some-
one else in regard to the further exploitation or
commercialisation of your product.
• A registered user agreement, where you, the
original designer, have registered a trademark
in respect of your product, and wish to give some-
one else the right to use your trademark.
note: A registered user agreement should
preferably be in writing, and should preferably
be recorded at the Trademarks Office.
• A restraint of trade agreement or clause, eg
where an employee leaves employment, or
when a business is sold. A restraint clause may
be held to be unenforcable if it is unreasonable.
It is possible that some of these agreements can be
recorded against a design, patent or trademark
registration, to notify third parties of the contrac-
tual position. It is usually important for the person
 receiving rights under such agreements for them to
be registered at the Design, Patent or Trademark
Office.
Lawyers well experienced in competition law should
be consulted, as well as IP lawyers, for example,
competition law in South Africa, anti-trust law in USA
and the block exemptions to the free-trade rules in
Europe may be most important in structuring IP-
related agreements.
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 con-
tract or on the basis of delict (or unlawful conduct).
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-
uct to that person, liability can arise. The liability is
based either on a breach of warranty (express or
tacit) that the product will be suitable for its purpose,
or on the warranty (tacit) of a seller against latent or
hidden defects in the product or on the basis of some
term in the contract.
Liability may be excluded by way of a suitable in-
demnity or other clause. Such a clause will be en-
forceable provided that it has been brought to the
notice of the other contracting party, and provided
that it is reasonable and not against public policy.
If the product involves inherent dangers or risks,
it is essential that suitable warnings be given.
Liability on the basis of delict
Liability can arise also in circumstances where there
is no contractual relationship between the designer
of a product and the person who suffered the loss
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
defective product, causes loss or damage to some-
one. Negligent conduct occurs where a designer
provides a product that will be defective or danger-
ous even with normal use, or where the designer
neglects to warn a purchaser against inherent dan-
gers, or neglects to instruct a purchaser on proper
installation and/or use and maintenance to avoid
potential dangers.
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 21
result of the normal installation or use of the product,
and that the designer acted negligently, eg in failing
to ensure that no defects existed, or in failing to warn
against potential risks or dangers.
It is essential that suitable warnings be provided
to users of the product where it involves inherent
risks, or requires precise installation or use.
Where the user of a product adapts or modifies the
product, and as a result suffers loss or damage,
the original designer or manufacturer is unlikely
to be held liable.
 It should be noted that certain safety requirements
or minimum standards may have been prescribed in
regard to certain products (eg electrical appliances),
by law often through standards authorities such as
the DIN and TÜV in Germany, SAE in USA, BSS in
UK and the SABS in our country and other regula-
tory bodies. Our SABS can give you assistance not
only in regard to standards compliance here, but
also in contacting foreign standards authorities.
VALUAtIon oF InteLLeCtUAL PRoPeRtY
What could this mean for me?
While Intellectual Property, eg patents and trade-
marks, has always been valued, increasing recog-
nition for this aspect has become well established,
especially for asset registers in company balance
sheets. Realisation has gained ground amongst
accountants and corporate executives that IP can
form a significant proportion of the assets in some
businesses. For example, it is believed that the
value of the Coca-Cola trademark, although an in-
22
tAX IMPLICAtIons
Should you generate or derive income from patents
and similar property, you may, over a period, deduct from
taxable income your expenditure on:
• devising and developing an invention;
• generating or making a design, trademark, copy-
right or similar asset;
• registering or obtaining a patent, design registration
or trademark; and
This is especially important in the case of items such
as workshop machinery which in South Africa must
comply with the Machinery and Occupational Safety
Act, 1983 (the MOS Act), and the National Occupa-
tional Safety Act (NOSA) requirements. It is recom-
mended that the designer of a product that is likely
to involve safety aspects make the necessary en-
quiries in this regard. (See address list in the insert
of this Guide.)
tangible asset, probably exceeds the capital value
of all plant producing and bottling Coca-Cola world-
wide. Placing IP value on the balance sheet can im-
prove the leverage of a company and justify in-
creased loan finance.
So don’t underrate the value of a portfolio of protec-
tion for your design, the portfolio may include a pat-
ent, design registration, copyright and trademarks.
Professionals are developing specialist practices
in the skills of IP valuation.
• acquiring from someone a copyright, design, patent,
trademark or similar property.
Since South African tax law is based on the residence
principle and no longer the source principle, income in
a South African resident’s hands, from foreign sources
is taxable. The international structuring of IP owner-
ship and revenue flows is an advanced and complex
 subject and will require advice from specialists in
this field.
Value added tax (VAT) is assessed on intellectual
property transactions, unless they relate to foreign
rights or foreign residents, when the tax is zero
rated.
InteLLeCtUAL PRoPeRtY ACts AnD tReAtIes
Copyright in South Africa is governed by the Copy-
right Act, 1978 (Act 98 of 1978), as amended.
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
the Trademarks Act, 1993 (Act 194 of 1993),
as amended.
South Africa is signatory to the International Con-
vention for the Protection of Industrial Property (the
Paris Convention) which relates to patents, designs
and trademarks.
This Convention provides for recognition of rights of
priority of designers, inventors and trademark own-
ers who have filed for protection in eg their home
country.
Consult a tax expert about exceptions to this ruling,
eg how it affects South African residents, companies
in neighbouring states or exporters.
The costs of extending or renewing the term of a
patent, design registration or trademark can be de-
ducted in full, provided that you produce or derive
income from these assets.
A single patent application can be made at the Euro-
pean Patent Office (EPO) in Munich to cover 31
European countries and 5 extension states.
A single application to the Eurasian Patent Conven-
tion (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 (ex-
cluding SA), Namibia and Mozambique; and OAPI
covering 15 (former French colonial) countries.
23
The Madrid Protocol relates to the international reg-
istration of marks and South Africa intends to join
within the coming year or so.
The Community Trademark Convention enables
South African applicants to file a single trademark
application with the Community Trademarks Office
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-
vation – comprises a complex process requiring a
wide range of experts, including people such as
engineers, industrial designers, market consultants,
manufacturing specialists, intellectual property ex-
perts and more. The success of product develop-
ment is greatly influenced by the cost, quality and
the time to market of the innovation. The innovator
is faced with the challenge of considering from the
outset all elements of the product life cycle and de-
sign the product to be successful in each stage of
its life cycle. Concurrent engineering is an enabling
approach that offers exactly this.
To get a new product into the market, the innovator
must do more than just develop something that
works. The technical development steps involved
in developing a new product should be matched to
a careful assessment of the new product’s market.
At the same time, the innovator needs to evolve a
24
business structure to support these activities and
to protect his or her interests including intellectual
property.
Enterprise creation
Good product ideas often have the potential to be
developed into business opportunities. The typical
development process of a small business is shown
in the diagram (top) on page 25.
However, there are many pitfalls on the road to a
successful product or business, which can be avoid-
ed by calling on experts to support you.
Find information on institutions that can assist you
with developing your product in the insert of the
Guide. Visit www.productdevelopment.co.za for
more information on product development.
Product or
business idea
} Product
research
} Product
development
} Feasibility
} Enterprise
creation
} Incubation
and support
} Enterprise
improvement

– Customer – Project – Market – Foundation – Technical – Competitive-

– Sample planning feasibility business training ness
collection – Concept – Technical – Mandatory – Business improvement
– Data generation feasibility registration skills and – Business
collection – Product – Economic – Identify and training skills
– Theme/image design and financial select tech- – Technical development
identification – Prototype modelling nology and support – Technical
generation – Business equipment – Business skills
– Design plan – Identify and support development
optimisation preparation select – Social – Market skills
– Design for – Identify and suppliers support development
manufacture select key – Identify and – Market – Quality
– Process staff select staff support improvement
optimisation – Identify and – Production – Legal support
– Patenting apply for systems – Image
– Pilot incentives – Management support
production – Funding and systems

investment – Business

– Contracting processe
– Install and
commission
– Training 25
 stAnDARDs AnD DesIGn
We tend to think of National Standards and design
as being from two different worlds. We think of de-
sign as being at the ‘leading edge’ finding new solu-
tions to problems, a more proactive approach to
problem solving. Standards on the other hand, are
considered to be reactive, since by definition, these
documents are developed by groups (or commit-
tees) and describe existing best practices or solu-
tions to problems.
Although the two groups approach problems from
a different perspective, the two worlds are moving
closer together and the work done by designers is
of benefit to standards developers in developing
more relevant standards. The body of knowledge
contained in standards is of significant benefit to
designers to ensure that their products move from
good ideas to market more efficiently.
tHe InteRDePenDenCe oF DesIGn
26
AnD stAnDARDs
More and more frequently, the design world is start-
ing to make direct reference to standards. Many
markets are starting to demand socially responsible
design – meaning that new products need to be able
to demonstrate certain qualities to the purchasers
that may not necessarily be evident in the product
itself, for example:
• the environmental impact during the design life
of the product,
• the accessibility of the product to disabled people,
• the safety of the product, particularly when used
by children,
• the safety or environmental impact of the proc-
esses used to assemble or manufacture the
product, or
• the standards or test methods that need to be
followed in order to meet certain labeling re-
quirements.
Standards can be regarded as a valuable resource
for designers and in many cases are becoming a
valuable part of a designer’s toolbox when con-
sidering solutions to certain problems. There are a
number of examples where the use of standards can
make the life of designers and developers easier,
since certain problems could already be described.
Product safety
In the area of product safety, many standards have
been developed and many aspects of both the
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
of such standards include the numerous electrical
appliance standards that do not necessarily describe
what an appliance should look like, but describe
how it should be used (safely), as well as what it
should do.
Product interoperability
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
necessarily redesigned each time. The standards
for these associated products can help the designer
to develop a product that will work both effectively
and efficiently. By way of example, electronic prod-
ucts can have standard switches plugs, printed
circuits and chips incorporated into their design
which would assist in the speed to market and the
Ergonomics
lowering of manufacturing costs.
Marking
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
symbols to mark the product or its components.
Labelling
tHe DeVeLoPMent oF stAnDARDs
Products often also require that information about
the product that cannot necessarily be determined
by examining the product itself, be contained in a
label. Often the requirements for product labels are
contained in legislation, but designers and manufac-
turers may choose to provide additional information
depending on the intended market of the product.
These labels can include things such as the environ-
mental impact of the product or manufacturing
process (eg ‘dolphin friendly’ tuna, or wood prod-
ucts from a sustainable forest) or they can describe
the composition of the product (such as the nu-
trient labelling of food products or composition of
plastics), or the labelling may include aspects such
as the performance rating of the product under
certain conditions (eg the energy rating or fuel effi-
ciency of products). In order to make these claims,
the manufacturer will need to make use of standard
tests and in specific cases, some form of third party
attestation may also be required.
Many standards contain the information about the
repeated use of certain products. In some cases
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 re-
source rather than having to research these issues
every time.
One of the key pillars of standards is that they should
be relevant and useful. It makes no sense for the
national standards body to develop a set of stand- 27
ards that are not used in the market place, either
because they add no value or because they hinder
the development of new products.
Standards can provide a valuable resource in terms
of defining the problem space in which a product is
designed, by providing a set of documents that de-
scribe the constraints, as well as the output require-
ments for the finished product.
A standards developing organisation such as the
South African Bureau of Standards (SABS) strives
 not to restrict innovation when drafting standards
and not to describe the products in terms of their
outputs or what they should do. There is a fine
line between being flexible enough to allow for the
development of new products that do not yet exist,
while still being able to verify that the product does
indeed conform to the standard.
In areas of new product development, it may also
form part of the marketing strategy to have your
product described as the national or international
standard for this specific product so that your prod-
uct complies to the standard at least or at most,
your product complies but your [future] competitors’
do not.

Standards development organisations worldwide, Designers should not only look at standards as a
recognise that we do get this wrong at times – some-
constraint on their new designs, but should regard
times standards may restrict certain new products,
the incorporation of standards as a way to increase
or technology if a field changes over time. For this
the competitive potential of their designs.
reason, standards may be amended and are also
regularly reviewed for relevance (every five years
In summary, as more new products enter the market
in the case of Standards South Africa, a division of
at an increasing rate, it is becoming apparent that
the SABS).
keeping abreast with the latest design trends can
lead to better standards. At the same time, designers
Standards can reflect the changes in the market
can deliver better and more efficient design by keep-
place and the problems that designers are facing if
ing abreast with the latest developments in stand-
these people participate in the standards develop-
ment process. Standards developers and designers ards.

need to work together to ensure that the standards

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
28 be covered. relevant products that get to the market place.

To contact the Standards Division of the SABS,

stAnDARDs As A MARketInG tooL refer to the insert in this Guide.

The introduction of new products to the market of-

ten requires more than exciting and innovative de-
sign. 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.
ThE DESIgN INSTITuTE of ThE SABS
The SABS Design Institute, promotes the benefits
of good design in order to stimulate the economic
and technological development of South Africa
The Institute’s initiatives focus on education, indus-
try and information. It administrates a number of
award schemes and publishes regular ad hoc pub-
lications.
The Institute founded the following initiatives:
SABS Design Excellence Awards
The award scheme aims at recognising the achieve-
ments of South African product designers, encour-
aging local product design and manufacture, as well
as promoting international competitiveness of local
products.
Design for Development Initiative
The Design for Development Initiative was founded
in 1997 by the Design Institute and includes confer-
ences as well as international meetings on Design
and Africa. The initiative addresses important issues
such as African global competitiveness, design edu-
cation across the continent, and design as a catalyst
for socio-economic development.
Design Achievers Award
The award encourages entrepreneurial spirit and
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
design@sabs.co.za
www.designinstitute.org.za