SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
10.2 Procedure for Assigning an Intellectual Property Right
proceedings is liable to pay the tax cost depend- ent on the costs order made by the court, which may include the costs of one or two counsel and expert witness fees. 9. Alternative Dispute Resolution 9.1 Type of Actions for Intellectual Property Alternative dispute resolution is not a common way of settling an intellectual property case, although there are sufficient mechanisms avail- able to avail oneself of this procedure. It is typi- cally not in a respondent’s or defendant’s inter- est to follow alternative dispute resolution. 10. Assignment and Licensing 10.1 Requirements or Restrictions for Assignment of Intellectual Property Rights Assignments must be in writing, but there is no requirement to be registered (but this is then only valid between parties). An application to record an assignment must be made within six months of the date thereof, but it is possible to file a request for a time extension. Approval from the Reserve Bank of South Africa needs to be obtained if assignment occurs from a South Afri- can entity to a foreign entity.
An assignment agreement signed by the parties is registered at the Patent Office by filing a P16 form and paying the prescribed official fee. The assignment is recorded in the patent register as evidence of said assignment. 10.3 Requirements or Restrictions to License an Intellectual Property Right There are certain statutory restrictions to licens- ing agreements concerning patents. In effect, these restrictions are aimed at preventing unfair and anticompetitive licensing practices. 10.4 Procedure for Licensing an Intellectual Property Right There are different types of licence agreements, and licences can be recorded at the Patent Office and shown in the patent register by fil- ing the requisite form and paying the prescribed official fee. An application to record a licence must be made within six months of the date thereof, but it is possible to file a request for a time extension. With plant breeders’ rights, a deed of record of the licence must be filed within 30 days, and in case of copyright, exclusive licences must be in writing.
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