SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
ing a purchaser or licensee from making or using the invention in a country where the invention is not protected. A copyright holder may also not enforce the right against fair dealings, which generally constitutes research or private study, criticism or review or the reporting of current events. 3. Infringement 3.1 Necessary Parties to an Action for Infringement The registered owner is usually a party to an action for infringement. However, under certain circumstances, the licensee of patents and reg- istered designs will not be a party to the action. This occurs where the owner has notified the licensee and they chose not to be a party. In the case of patents, the owner will not be a party to the action if the licensee notified them two months beforehand and the owner has elected not to be a party to the action. With registered designs, an exclusive licensee, under compul- sory licences, must be a co-party, along with the owner, to the action. In case of plant breeders’ rights, the licensee and the owner must be co- joined in actions. In case of copyright, the owner or licensee may be a party to actions. Where the licensee initiates infringement actions, they are obliged to inform the owner, who may decide to join in the action. 3.2 Direct and Indirect Infringement There are differences in direct and indirect infringement among the different intellectual property rights. Concerning patents, indirect infringement may occur where an individual aids and abets the direct infringement of the right of another per-
son and is actionable. South African courts recognise indirect infringement of patent rights, and interdicts, damages, delivery up and Anton Piller-type orders are available against direct and indirect infringement. As with patents, indirect infringement of registered designs is recognised in South African law. With copyright, the relevant Act recognises both direct and indirect infringement. Direct infringe- ment occurs when an act is performed that may only be performed by the owner or licensee. Indirect infringement occurs when an unauthor- ised person deals with or allows the public per- formance of works constituting direct infringe- ment. Interdicts (injunctions), damages, delivery up and Anton Piller-type orders are available against direct and indirect infringement. 3.3 Process Patents Under South African law, a patented article is any product produced through a patented pro- cess, method or machine. There is also a rebut- table presumption that such article is made by a patented process, method or machine. However, the owner of a patent right may not contractually prevent a purchaser of a patented article from using or acquiring any article obtained from a The scope of protection of an intellectual proper- ty right is, by default, determined by the courts. In the case of patents, the principles used to determine whether infringement has occurred are mainly derived from the test created by Ensign-Bickford (South Africa) (Pty) Ltd and oth- ers v AECI Explosives & Chemicals Ltd 1998 BIP 271 (SCA). As per this case, the test involves determining: process not protected by the right. 3.4 Scope of Protection for an Intellectual Property Right
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