This action might not be possible to undo. Are you sure you want to continue?
Are you a designer? Do you know about design registration? Are you an inventor? Do you know about patent registration? Are you a product manufacturer? Do you know about product liability? Are you an author, engineering draftsman or a computer programmer? Do you know about copyright? Do you know the processes to follow? Do you know who can support you? have you considered the role played by standards in your design?
© ® TM PAT
INTEllEcTuAl ProPErTY rIghTS
Inventors and designers whose business it is to generate intellectual property should acquaint themselves with the legal aspects of protecting what is rightfully theirs
ISBN 978-0-626-21033-5 © Copyright reserved. No part of this publication may be reproduced without the prior permission of the SABS Design Institute.
Your guIDE To INTEllEcTuAl ProPErTY rIghTS IN SouTh AfrIcA
Edited and published by the SABS Design Institute. contributers: — Intellectual property law information researched and revised by AJS Dunlop, SA Institute of Intellectual Property Law (SAIIPL) — Standards and design submitted by Geoff Visser, Standards South Africa, SABS — The product development process submitted by Neels Babst, CSIR — Acknowledgement of input from CIPRO SABS Design Institute: — Adrienne Viljoen, Manager — Esmé Kruger, Design Information — Zenobia Norval, Awards Coordinator — Bongani Ntombela, Design for Development — Portia Mposula, Project Assistant — Vuyiswa Daniel, Design Secretariat SABS Design Institute Private Bag X191 PRETORIA 0001
This booklet is based on information available in 2008 but should not be treated as a substitute for detailed advice from a professional legal advisor. It is published without responsibility on the part of the Design Institute, which cannot accept accountability for the consequences of anyone acting on the information contained herein.
Tel: 012 428 6326 Fax: 012 428 6546 E-mail: email@example.com www.designinstitute.org.za
4 4 6 10 15 18 19 19 20 21 22 22 23
PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY Copyright Design registration Patents Trademarks Counterfeit goods Protection by other laws Protection elsewhere Licences, assignments and other agreements Product liability Valuation of intellectual property Income tax implications Intellectual property acts and treaties 1
tHe PRoDUCt DeVeLoPMent PRoCess Enterprise creation
stAnDARDs AnD DesIGn
InseRt: UseFUL ADDResses FoR tHe InVentoR AnD DesIGneR InseRt: DesIGn PRoteCtIon At A GLAnCe
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?
The following definition comes from the Web. The general term for intangible property rights which are a result of intellectual effort. Patents, trademarks, designs and copyright are the main intellectual property rights. — www.patent.gov.uk/design/glossary/ The use of intellectual property rights in the global 2 marketplace is a major facet of business today. The leaders in exploiting this source of wealth are probably the USA and South Africans are fast learning to enter the game. Your inventive ideas, works and product designs, whether aesthetic or functional in nature, constitute intellectual property. The value of intangible assets 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 creator of the design and the investor who finances
development of the design will derive the full commercial benefit of the design. Legal protection of intellectual property ensures that exclusive rights are captured, which may be the only power which you can exert against powerful corporations. Conversely, they may be the prime value that you can sell or licence to powerful corporations. Even powerful corporations need to be able to prevent unauthorised use and resist powerful competition. Your new product design may entail features that qualify for protection under one or more of the four major fields of law that govern intellectual property in South Africa and abroad. The provisions of these may overlap to cover different aspects of the same article or product and while there are differences of detail in foreign countries, the broad principles 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 passingoff or unlawful competition, in accordance with the common law in some countries.
also be downloaded from the CIPRO website at www.cipro.gov.za. In this publication the different fields of law that
In South Africa, the intellectual property division of CIPRO, the Companies and Intellectual Property Registration Office, is responsible for the registration of patents, trademarks, designs and copyright. The division keeps records of all patents, trademarks, designs and copyright that are lodged in South Africa, including details of the owners/proprietors. 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. Application forms for the different kinds of protection are available at these offices or can be requested from CIPRO by mail or telephone. These can
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 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 development process has also been included, as well as explanation of the role of standards in the design process. 3
PRoteCtInG soUtH AFRICAn InteLLeCtUAL PRoPeRtY
The Berne Copyright Convention covers most countries of the world, including South Africa and lays down basic principles of copyright law that all member countries have to comply with. The discussion that follows focuses on the law in South Africa, but many aspects are also valid in foreign countries, broadly speaking Berne extends your copyrights internationally. However, make a point of consulting an expert! In the case of your artistic works, a person who makes a three-dimensional reproduction (eg in the form of a usable article) of your two-dimensional artistic work such as a drawing, infringes your copyright in that drawing. This may also include the making of a two-dimensional reproduction of your three-dimensional work. It is important to remember that copyright does not protect the underlying concepts of a design, only the particular rendition of it, which you have reduced to material form (including in a computer).
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 photographs, all irrespective of their artistic quality; works of architecture; and works of craftsmanship (including works of artistic craftsmanship as well as works of craftsmanship of a technical nature). ‘Drawings’ would thus include engineering and industrial design drawings. The concept ‘works of craftsmanship’ would include three-dimensional articles, for example prototypes and models prepared in the course of design work.
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 licensed, 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 owner the right, generally speaking, to prevent others from making a reproduction (or copy) of the copyright 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 substantially similar to the original work. The protection afforded you also extends to socalled 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 computer 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.
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 newspaper 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 (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 becomes 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. 5
Are there any exceptions to copyright protection?
In the usual course of events, it will also be an infringement of the copyright in a work if a reproduction of another reproduction of the work is made. However, important exceptions apply to spare parts throughout the world and in South Africa threedimensional 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.
How long does copyright protect you?
Copyright is immediate and for artistic works (except 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 lawfully made available to the public.
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).
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 copyright can be registered in South Africa.
What are the registration requirements for copyright?
No prior registration or any other formality is re6 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.
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 law varies somewhat from country to country, but the key feature common to all, is that registration is essential before you have the right and the design must be new when you register. The Paris Convention allows you to register in further countries up to 6 months after the basic registra-
What countries are covered by copyright protection?
The list of Berne Convention countries is obtainable from the Government Printer, or consult a
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.
of shape or configuration or pattern or ornamentation (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 features 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 intermediate form containing electrical, electromagnetic or optical elements and circuitry, which is capable of performing an electrical or an optical function, and in which at least part of the electrical, electromagnetic or optical elements and circuitry are integrally formed, in accordance with a predetermined topography 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 and circuitry in an integrated circuit. A mask work consists of a pattern of an image however fixed or encoded, having or representing at least part of an integrated circuit. 7
Aesthetic and functional design
Although good design usually inherently blends both aesthetic (eye appeal) design and functional (eg ergonomic) design in the product, the law in South Africa grants separate protection and different protection periods to aesthetic and functional features of designs and requires different conditions to be met before giving protection (see below). In some foreign countries functional design cannot be protected by a specialised law for design, but where it is, it goes under different names, such as “gebrauchsmuster” – Germany, “utility model” – France, “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?
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.
The categories of registered design protection
An aesthetic design registration protects the features of appearance of an article, ie the features
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 necessary 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 surrender of any infringing product or article or of any product of which the infringing product forms an inseparable part.
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 subject of a valid registration for a functional design but it may be the subject of an aesthetic design. As mentioned, the rules for design law in foreign countries are different and complex.
Design protection is not for inventions
Broadly speaking, a patent protects an invention in many embodiments, which incorporate the underlying invention. Functional and/or aesthetic design is applied to a commercially suitable embodiment in order to bring it to market acceptance.
What are the conditions for a valid 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.
How long does design registration protect you?
The maximum duration in South Africa of protection for an aesthetic design is fifteen (15) years whereas 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 unintentional and where no undue delay has occurred in the making of the application for restoration.
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 protection in other countries applications have to be filed in such countries. A South African application can serve as a basis to claim convention priority rights in most other countries, provided a corresponding application is filed in that other country within six months of the South African application. A community design covers 25 European countries.
Abuse of design rights
Compulsory licences are possible in the case of abuse of rights, eg. failing to make the design available adequately and to a commercial extent, failing to meet the demand for the design to an adequate extent and on reasonable terms and failing to grant licences on reasonable terms, where they should be granted in the public interest.
Tips and comments on design registration protection
A design must be registered in one or more specified classes listed in the Designs Classification of Goods. The protection afforded by the registration is restricted to the nominated class or classes in which the design has been registered. Classification lists are available from the Designs Registration Office at CIPRO in Pretoria (see address list inserted in this Guide . It is probably safer to keep new designs confidential 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 registration number; otherwise you may find that infringement damages are not recoverable. It is a criminal 9
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 professional advice but also the creation of a file, preparation of documents and drawings and the running of a maintenance and reminder system for timeous renewal of registration fees.
offence to indicate that a design is registered if it is not. When you are commissioned to create a design, ensure that the term of the contract correctly reflects your intentions and your rights to the design.
the Registrar of Designs at CIPRO or can be downloaded from their website www.cipro.gov.za Representations of the design must be filed on A4 size paper. It can be drawings or photographs. Drawings are preferred as far as possible, without explanations 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 photograph. 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 publication” to be advertised in the Patent Journal. If the applicant wishes to register the design in other
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 bibliographic information, accompanied by a written note and drawings or images concerning registration of trademarks, patents and designs. You can order the Patent Journal from Government Printing Works, Bosman Street, P/Bag X85, Pretoria 0001. The basic procedures to register are as follows: 10 Step 1: It is advisable to do a novelty search at the search facility at CIPRO’s Paper Based Disclosure Centre. The cost is R4 and it is a search that the applicant can do him/herself or appoint a patent attorney to do it on their behalf at extra costs.
countries as well, he/she needs to do so within six months from the filing of the South African filing by making use of the services of a patent attorney firm.
What does a patent protect?
A patent refers to a new and non-obvious invention, which is suitable to be applied in trade or industry or agriculture. An invention can be a new product, process, device or the like, or an improvement on an existing product, process, device or the like.
Step 2: To apply for registration, a set of forms must be completed consisting of D1 (dupl.), D2 (dupl.), D3, D6 (dupl.) and D8 (dupl.). The registration fee is R240. Application forms can be obtained from
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 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 protection 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-operation Treaty) system, for which see below.
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 concerned, but there are a few regional patents, one for Europe, one for “English-speaking” African countries and one for “French-speaking” African countries. A patent for “Europe” now extends to numerous East European and Mediterranean countries as well. A patent gives you the right to exclude others from making, using, exercising or disposing of your invention, so that you can enjoy the whole profit and advantage accruing from the invention for the duration of the patent.
What will patent protection cost you?
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 description or too narrow a definition of the invention), the 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 11
Are there any exceptions to patent protection?
Certain categories of inventions excluded from patent protection in most countries are the traditional copyright works or any aesthetic creations; a method, 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 excluded categories can be indirectly protected by monopolising the technology necessary for them.
include professional advice, preparation of specification drawings and formal papers and the implementation of a system to remind you and making the payments.
12 months to 30 months, internationally, by filing a PCT (Patent Co-operation Treaty) patent application. Rights are provisionally reserved in 135 countries and the benefit of an international search and preliminary examination is included. The advantages 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.
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 protection, 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).
Tips and comments on patent protection
The term “new” means that the invention or information about the invention should not have been available to the public anywhere in the world. Accordingly, 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
What countries are covered by patent protection?
A South African patent has effect only in the territorial area of South Africa. If you require protection in 12 other countries, you must file separate applications 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 applications 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
instance has several advantages, including that it can be filed relatively quickly (since only a provisional 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 advantageous not to file a patent immediately, provided that the novelty of the invention will not be adversely affected by the delay. Limited protection during the product’s development and testing phase can be achieved in other ways, eg a confidentiality or non-disclosure agreement, before a patent application is filed (see Licences, Assignments and other Agreements, page 20). Once the patent is filed, the clock starts ticking and you have limited time before deciding whether or not to file a complete patent and, if so, in which countries. If your provisional patent protection time has expired, it may be possible to re-file your application. 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 patent 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 determine 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 inventions 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-inventing the wheel. South Africans now have good access via Internet, to international patent databases (see the addresses under the heading “Internet Searching Addresses”). In most overseas countries, such as the USA and Europe, intensive worldwide patent searches are carried out before a patent is issued, thus ensuring that the invention is truly unique. This is where the PCT procedure is helpful, as it includes the preliminary search, which is good insurance against adverse results later. Five years after the date of application for your patent in South Africa, any person can obtain details of search results in any foreign patent applications you may have filed. Publication of granted foreign patents usually include details of prior art that was considered before the grant to you. Searches in the markets where you intend to sell, are necessary if you want to be sure that in manufacturing you do not infringe someone else’s patent. 13
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 infringement damages can be recovered. Falsely claiming that patent rights exist is a criminal offence.
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 successful.
Basic procedure for patent registration
Step 1: It is advisable to do a ‘novelty search’ at the search facility at CIPRO’s Paper Based Disclosure Centre to make sure that the invention is truly new and will not infringe on someone else’s existing patent rights. It is a manual search that the applicant can do him or herself and costs R4. A patent attorney may also be appointed to do this on the applicant’s behalf. It is also advisable to do searches on other countries’ patent websites to ensure as far possible, that the invention is truly new. If no similar invention is found, the applicant can take the next step, which is to register the invention.
A private individual or a company may apply for a patent. The inventor/s can only be indicated as natural persons and not a company. If a company is the applicant or if the applicants differ from the inventor/s, an assignment of invention document from the inventor to the applicant must be filed with the application. It is more advantageous to apply in a private capacity – especially if it is planned to file the patent internationally Patent Cooperation Treaty System (PCT). A provisional patent may be extended up to three months, but a priority claim in a foreign country must be within 12 months. The cost for extension is R50 per month. Alternatively, the applicant may apply for post-dating, but the original protection date will be forfeited (the application date is “shifted” on as if the application was filed on a later date). One may post-date up to six months. The cost is R50.
Step 2: The applicant can apply for provisional patent 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
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 registered patent attorney on the specification. Through
the PCT system, an applicant may apply him/herself by doing an international reservation in member 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
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 distinguishing goods and services in respect of kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, 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
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, including 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, configuration, pattern, ornamentation, or a container
How does a trademark protect you?
Although you can devise and use your own trademark without registering it, its main benefits accrue through registration. A trademark registration entails numerous advantages for you, e.g. a trademark registration 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 deterrent to prospective infringers; it enables proceedings 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 registered trademark if that use would take unfair advantage of or be detrimental to the distinctive character or repute of a registered trademark.
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 registration 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
Are there any exceptions to trademark protection?
A mark may not be registered that is not capable of distinguishing goods or services or which consists exclusively of a sign which may serve in trade to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services. Nothing offensive, immoral, confusing, or indicating government patronage may be registered. Infringement will not arise in the case of bona fide use of names and descriptive material, reference to the indicated 16 purpose of goods and services, including spare parts and accessories, parallel importation, and the use of utilitarian features.
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 registered trademark has not been used for a period (in South Africa it is a period of five years), the registration 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 (Community 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 opportunities are not, however, free of potential difficulties and you will need to consult a specialist, such as
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
an attorney who has obtained the Trademark Practitioner 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 application.
There are various classes in the Trademarks Register 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 registration of trademarks. Enquire at CIPRO for more information in this regard.
Tips and comments on trademark protection
Unlike in the case of patents and designs, novelty is not a requirement for a valid filing. Generally speaking, the person who is using or intends to use the trademark may file the application. Thus an intention to use is a requirement and in some countries (eg USA) use in commerce. The proprietor of a trademark may allow a licensee to use his mark, but must ensure that no public deception or confusion will arise as a result. Registration as a “Registered User” is advisable. A trademark may become non-distinctive where everyone uses it as the accepted description of a product or service. If it becomes customary in current 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.
Basic procedure for trademark registration
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. 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 registration. The search result is usually available in eight working days. 17
A spot search can also be done at the office at a cost of R4 per name, but this is only for an identical search and it is NOT advisable to file a registration based on the result of a spot search. The main purpose of this spot search is only to narrow down your options if you are not sure about the name to choose for a proper special search.
What does the Counterfeit Goods Act protect?
This law in South Africa (from 1 January 1998) introduces measures aimed against trade in counterfeit goods. Such laws already exist in first-world countries, eg the UK.
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. • • • • •
Who is protected?
You, the owner of trademarks, copyright works and certain merchandise marks are given more effective 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 necessary by force, seize, remove and detain counterfeit goods, collect evidence, search and terminate counterfeit 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.
where someone carries on his business in contravention of the law; where someone spreads disparaging and untrue allegations about your goods, service or business;
PRoteCtIon bY otHeR LAws
In addition to the various forms of protection discussed 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 confusingly similar version of your design on the basis of passing it off to the public as yours; or prevent others from reaping the commercial benefits and advantages of your design by appropriating to themselves a substantially similar design and exploiting it in circumstances amounting to unfair competition. The law of unfair competition provides, in general, that anyone who intentionally or negligently causes loss or damage to you, a business rival (ie a competitor), through his wrongful conduct, will be liable for damages, and his conduct can be stopped or prevented by way of an interdict. The following are situations where your rights may be wrongfully affected: • where someone imitates the distinctive appearance, 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 passing off; • where someone deceives the public as to the quality, extent, nature, etc, of his own goods or service;
where someone acquires and uses (without authority) 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 protection elsewhere requires a carefully planned strategy including marketing, finance and cash flow projections, based on realistic cost projections. You must consult an experienced IP practitioner for assistance. All forms of legally recognised intellectual property protection are only enforceable within the area of the country’s legal jurisdiction. This includes other African or overseas countries, which operate independently when it comes to the protection of intellectual property. For this reason you need to file patents and register trademarks and designs separately in these countries, as has been discussed. Note that some countries are signatories to international 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 protection in their country within the prescribed time. 19
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
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).
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 original designer, decide to sell your design and all rights in it to someone else, so that they will be20 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 designer, decide to retain ownership of this design and the rights therein, but licence or authorise someone else to be responsible for the commercialisation of it, usually upon payment of a continuing royalty to you. It is possible that some of these agreements can be recorded against a design, patent or trademark registration, to notify third parties of the contractual position. It is usually important for the person • 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. • A registered user agreement, where you, the original designer, have registered a trademark in respect of your product, and wish to give someone else the right to use your trademark. • A joint venture agreement, where you, the original designer, wish to enter into a partnership or other continuing business relationship with someone else in regard to the further exploitation or commercialisation of your product. • A confidentiality agreement, where you, the original designer, need to disclose confidential information to someone else, eg to acquire technical assistance, financial assistance, marketing advice, etc, and you wish to safeguard your rights.
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 IPrelated agreements.
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
The manufacturer or designer of a product can be held liable for loss or damage caused as a result of the use of his product, either on the basis of contract or on the basis of delict (or unlawful conduct).
defective product, causes loss or damage to someone. Negligent conduct occurs where a designer provides a product that will be defective or dangerous even with normal use, or where the designer neglects to warn a purchaser against inherent dangers, or neglects to instruct a purchaser on proper installation and/or use and maintenance to avoid potential dangers.
Liability on the basis of contract
Where there is a contractual relationship between the designer or manufacturer of the product and someone suffered loss or damage, eg where the designer or manufacturer sold or supplied the product 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 indemnity or other clause. Such a clause will be enforceable provided that it has been brought to the notice of the other contracting party, and provided
Where the product is inherently dangerous or can be used in a dangerous manner, a complainant will have to show that the loss or damage arose as a result of an inherent defect in the product, or as a result of the normal installation or use of the product, and that the designer acted negligently, eg in failing 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. 21
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 regulatory bodies. Our SABS can give you assistance not only in regard to standards compliance here, but also in contacting foreign standards authorities.
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 Occupational Safety Act (NOSA) requirements. It is recommended that the designer of a product that is likely to involve safety aspects make the necessary enquiries in this regard. (See address list in the insert of this Guide.)
VALUAtIon oF InteLLeCtUAL PRoPeRtY
What could this mean for me?
While Intellectual Property, eg patents and trademarks, has always been valued, increasing recognition 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 22 value of the Coca-Cola trademark, although an inSo don’t underrate the value of a portfolio of protection for your design, the portfolio may include a patent, design registration, copyright and trademarks. Professionals are developing specialist practices in the skills of IP valuation. tangible asset, probably exceeds the capital value of all plant producing and bottling Coca-Cola worldwide. Placing IP value on the balance sheet can improve the leverage of a company and justify increased loan finance.
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, copyright or similar asset; registering or obtaining a patent, design registration or trademark; and 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 ownership and revenue flows is an advanced and complex • acquiring from someone a copyright, design, patent, trademark or similar property.
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.
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 deducted in full, provided that you produce or derive income from these assets.
InteLLeCtUAL PRoPeRtY ACts AnD tReAtIes
Copyright in South Africa is governed by the Copyright 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 Convention 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 owners who have filed for protection in eg their home country. 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 Madrid Protocol relates to the international registration of marks and South Africa intends to join within the coming year or so. A single application to the Eurasian Patent Convention (EAPO) covers 9 countries of the former Soviet Union. Regional patent grants covering African countries are available to South Africans, they are: ARIPO covering 13 (former British colonial) countries (excluding SA), Namibia and Mozambique; and OAPI covering 15 (former French colonial) countries. 23 A single patent application can be made at the European Patent Office (EPO) in Munich to cover 31 European countries and 5 extension states.
tHe PRoDUCt DeVeLoPMent PRoCess
The journey of a new product – from idea to innovation – comprises a complex process requiring a wide range of experts, including people such as engineers, industrial designers, market consultants, manufacturing specialists, intellectual property experts and more. The success of product development 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 design 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 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. However, there are many pitfalls on the road to a successful product or business, which can be avoided by calling on experts to support you. 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. business structure to support these activities and to protect his or her interests including intellectual property.
Product or business idea
Product research – Customer – Sample collection – Data collection
Product development – Project planning – Concept generation – Product design – Prototype generation – Design optimisation – Design for manufacture – Process optimisation – Patenting – Pilot production
Enterprise creation – Foundation business – Mandatory registration – Identify and select technology and equipment – Identify and select suppliers – Identify and select staff – Production systems – Management systems – Business processe – Install and commission – Training
Incubation and support – Technical training – Business skills and training – Technical support – Business support – Social support – Market support – Legal support – Image support
Enterprise improvement – Competitiveness improvement – Business skills development – Technical skills development – Market skills development – Quality improvement
– Market feasibility – Technical feasibility – Economic and financial modelling – Business plan preparation – Identify and select key staff – Identify and apply for incentives – Funding and investment – Contracting
– Theme/image identification
stAnDARDs AnD DesIGn
We tend to think of National Standards and design as being from two different worlds. We think of design as being at the ‘leading edge’ finding new solutions 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 committees) and describe existing best practices or solutions 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. In the area of product safety, many standards have been developed and many aspects of both the 26 • • • the safety of the product, particularly when used by children, the safety or environmental impact of the processes used to assemble or manufacture the product, or the standards or test methods that need to be followed in order to meet certain labeling requirements. 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 considering 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.
tHe InteRDePenDenCe oF DesIGn AnD stAnDARDs
More and more frequently, the design world is starting 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,
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.
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 products can have standard switches plugs, printed circuits and chips incorporated into their design which would assist in the speed to market and the lowering of manufacturing costs.
as the performance rating of the product under certain conditions (eg the energy rating or fuel efficiency 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 resource rather than having to research these issues every time.
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.
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 manufacturers may choose to provide additional information depending on the intended market of the product.
tHe DeVeLoPMent oF stAnDARDs
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 standards 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 These labels can include things such as the environmental impact of the product or manufacturing process (eg ‘dolphin friendly’ tuna, or wood products from a sustainable forest) or they can describe the composition of the product (such as the nutrient labelling of food products or composition of plastics), or the labelling may include aspects such A standards developing organisation such as the South African Bureau of Standards (SABS) strives of defining the problem space in which a product is designed, by providing a set of documents that describe the constraints, as well as the output requirements for the finished product. 27
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. Standards development organisations worldwide, recognise that we do get this wrong at times – sometimes standards may restrict certain new products, or technology if a field changes over time. For this reason, standards may be amended and are also regularly reviewed for relevance (every five years in the case of Standards South Africa, a division of the SABS). Standards can reflect the changes in the market place and the problems that designers are facing if these people participate in the standards development process. Standards developers and designers need to work together to ensure that the standards that we have are relevant, that they allow for innovation and that they cover the areas that need to 28 be covered.
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 product complies to the standard at least or at most, your product complies but your [future] competitors’ do not. Designers should not only look at standards as a constraint on their new designs, but should regard the incorporation of standards as a way to increase the competitive potential of their designs. In summary, as more new products enter the market at an increasing rate, it is becoming apparent that keeping abreast with the latest design trends can lead to better standards. At the same time, designers can deliver better and more efficient design by keeping abreast with the latest developments in standards. Standardisers and designers should work more closely together in order to provide innovative and relevant products that get to the market place. To contact the Standards Division of the SABS,
stAnDARDs As A MARketInG tooL
The introduction of new products to the market often requires more than exciting and innovative design. Many purchasers are risk-averse and would like to know that the product conforms to certain minimum requirements or standards. It therefore pays to have some form of compliance statement as part of the marketing strategy.
refer to the insert in this Guide.
ThE DESIgN INSTITuTE of ThE SABS
The SABS Design Institute, promotes the benefits of good design in order to stimulate the economic and technological development of South Africa The Institute’s initiatives focus on education, industry and information. It administrates a number of award schemes and publishes regular ad hoc publications. The Institute founded the following initiatives: The Design for Development Initiative was founded in 1997 by the Design Institute and includes conferences as well as international meetings on Design and Africa. The initiative addresses important issues such as African global competitiveness, design education across the continent, and design as a catalyst for socio-economic development.
Design for Development Initiative
Design Achievers Award SABS Design Excellence Awards
The award encourages entrepreneurial spirit and The award scheme aims at recognising the achievements of South African product designers, encouraging local product design and manufacture, as well as promoting international competitiveness of local products. design leadership amongst tertiary design students.
New product development support programme
This programme aims at assisting and encouraging new product development in South Africa through the prototype consultation sessions, seminars and publications.
SABS HEAD OFFICE: Pretoria Street Address: 1 Dr Lategan Road, Groenkloof Postal Address: Private Bag X191, Pretoria, 0001 Telephone: +27 (0) 11 428 7911 www.sabs.co.za SABS Design Institute Telephone: +27 (0) 12 428 6326 Fax: +27 (0) 12 428 6546 firstname.lastname@example.org www.designinstitute.org.za
This action might not be possible to undo. Are you sure you want to continue?
We've moved you to where you read on your other device.
Get the full title to continue listening from where you left off, or restart the preview.