Innovus News: A New Alliance, and New Team Member and a New-Look Website
It has been another big month here at Innovus, as you may be able to tell by the clever headline. We’ve welcomed a new team member to the family, overhauled our digital home and joined forces with Commercial Services (at long last) to strengthen our physical presence! We also have an update on everyone’s favourite healthy snack, S’Cool Beans!
Welcome to the family: Liezel Britz
The first thing we’d like to do is welcome Liezel Britz to Innovus. She has only been with us since May this year, but she’s already making a difference to the way things are done around here. With a background as an academic administrator at the University of the Free State she now has the important task of coordinating the administration of Short Courses and Copyright. She also sees herself as a ‘process initiator’, as it’s often up to Liezel to make sure that the processes are properly followed as well as firmly ensuring that the Short Course administrators on campus stay within the institutional guidelines and policies – and this is far easier written than done. She has a clear game plan for Innovus in the short term, as she’s going to be striving towards a more agile, electronic and paperless system as we move towards 2018. In her free time, she’s a lover of dogs, gardening and nature in general. We think she’s going to fit in just perfectly at Stellenbosch University, as she already fits perfectly within Innovus.
Welcome Commercial Services:
For years is has been the responsibility of the Commercial Services Division (CSD) to manage all the internal initiatives in and around our University – and that dance card is pretty full. Hein Swanepoel, Director: Commercial Services and his CSD Team look after everything from the Maties Store and the Botanical Gardens to our Copy Shop. It’s their job to treat each of these for exactly what they are – businesses. So, profit and sustainability are their end goals.
It’s also this Team’s duty to make sure that any activity, within its purview that can be commercialised, is commercialised, creating new income streams. This means that all new University building plans need to run through them first. For example, if SU decides to build a new art building, CSD would be able to advise the faculty on potential commercial applications. Can we add a cafeteria? Can we rent gallery and working space? It is an entrepreneurial mind-set that strengthens the financial position of our University while the students and faculty can continue to focus on their business at hand. It also allows for new ideas such as a payment-student card platform, a new, revitalised Maties Store (which will sell everything from sports equipment to Maties Milk) and an enhanced Botanical Garden shop (all of which the Team are working on) to become realities.
Innovus feels, and CSD agrees, that our thought processes are symbiotic, and together we’re going to be able to achieve far more than we were able to previously.
The New Innovus Website:
We may be at the cutting edge of tech transfer, but our website up until a few months ago didn’t reflect that… A legacy of many, many updates and tweaks, it had become less than what we had always wanted it to be. As such, we have poured many hours of brainstorming, meetings, planning and a pinch of blood, sweat and tears into completely overhauling our web presence. Under the guidance of Doris Peters, we have taken the best of the old and combined it with the greatest of the new, and this means that we’re as proud of the new Innovus website as we are of the spin-out companies and technologies represented therein.
One of the main focusses was to try and make navigation for any potential stakeholder as easy as possible. The stakeholders we’re talking about are both internal (researchers, faculty and innovators) and external (investors, potential licence opportunities and other universities) parties.
We also refreshed the way each spin-out company was represented, adding hundreds of new images and creating focussed, targeted descriptions.
Not only that, you can now find (easily!) and download everything from Disclosure Forms to IP Rights. Make sure you check out the animated process flow diagrams that show exactly how we build ideas into stand-alone businesses (coming soon).
The result is both sophisticated and sexy. Above all, it is a true representation of the work we do here, the people that do it, and the inventors we do it for. And, at the end of the day, isn’t that what a website is supposed to be?
S’Cool Beans gets a partner:
It seems like just the other day we were talking about S’Cool Beans for the first time. Started in early 2016, they created a product which was as healthy as it was tasty – a sandwich spread that gave underprivileged youngsters almost all the nutrition they needed to survive, with no added sugar and sodium. And S’Cool Beans has grown (un)surprisingly quickly since then, coming in – just a few months later - as finalists in the annual International Union of Food Science and Technology (IUFoST) competition in Dublin.
Most recently they have signed an agreement with a preferred manufacturer, who will open up a whole new consumer world. And we’re not just talking about spreads here… the reality is that the IP behind S’Cool Beans can be applied to many other end products – all of which will have the same healthy, nutritious base as the product that started it all, in a Food Sciences Lab at Stellenbosch University.
That wraps up our Innovus news for this quarter. Looking back has been a great reminder of what we can accomplish – but it doesn’t compare to what we expect to see ahead of us!
Until next time.
The Innovus Team (now with added Liezel and enhanced with our CSD alliance)
Innovus Companies That Start With C, but Get an A+
This newsletter’s featured companies both start with the letter C – Custos Media Technologies and CubeSpace - but that’s not where their similarities end. Both have attracted international interest and funding partners. Both are growing incredibly fast, working in fields at the cutting edge of science and both are pushing the boundaries of what’s possible within those fields. And both are supported by Innovus.
And there, dear reader, is where these two paths diverge. Let me tell you about why Innovus is so excited about both of these businesses.
Custos Media Technologies (which you may have read about in the most recent TIA Seed Fund newsletter) was started as a response to the burgeoning threat that digital piracy presents to the world of content creators. And, it’s a doozy… Last year alone the American movie industry was robbed of $22 billion of its revenue due to ‘infringement’ (a nice way of saying ‘theft’). 19% of movies in 2016 were leaked before their official release and, in South Africa, almost a quarter of all Internet traffic is estimated to be infringing. Digital piracy is so rampant because it’s so difficult to monitor, investigate then, thus, stop. Just consider the last thing ‘your friend’ just had to have off the internet, and how easy it was to acquire it…
Custos was created as a clever (and really unique) way to use cryptocurrencies like Bitcoin, and their online ledgers (the ‘blockchain’) to discourage the recipients of rights-protected digital material from redistributing it. This could be seen (as is being seen by many hungry investors and starving movie houses) as ‘nipping the problem in the bud’, because Custos identifies and cuts the infringement threat off before it has a chance to spread. In laymen’s terms, they hide Bitcoins within rights-protected files – music, movies or (in the near future) even books – and then employ ‘Bounty Hunters’ to find these files anywhere they shouldn’t be, claiming the bounty for themselves, which notifies Custos and their client exactly which version of which file was leaked – often In about 11 seconds. In a nutshell, if a licenced holder of a digital file (like a reviewer or editor) ever decides to ‘share’ that file, they can be identified. So, you may not be able to reacquire the leaked content, but you can definitely plug the hole...
With this information studios and publishers can react before their next blockbuster goes fully public. They can also decide to attempt to convince distributors to remove any upload links they’ve posted, cut them off from additional content, prosecute the offenders or simply move up the release date of the movie or album.
It all started in 2013, when Prof Gert-Jan van Rooyen and his co-counders had the idea and pitched it to Innovus CEO, Anita Nel, who “loved it”. Innovus then helped the newly formed Custos secure R500 000 of funding from the TIA Seed Fund, which they used to hire their first employees, travel to Hollywood to run their ideas past the most affected companies, and test their hypotheses. They then secured additional funding from new shareholders (like the international cryptocurrency experts, Digital Currency Group) and angel investors, all of whom they were exposed to thanks to Custos’ residence at Stellenbosch University’s innovation incubator, LaunchLab. But if you think all that is impressive, you’re going to be excited by what’s coming next!
Custos are growing their army of Bounty Hunters, who are currently working across 4 continents – the more eyes they have, the faster they can respond. Thanks to new solid deals they are expanding their coverage to the UK and Japan, which should be followed shortly by the USA. And they’re even looking into protecting new infant technologies like VR and AR (which are costly, and have no DRM). It won’t be long before ‘borrowing things off the internet’ is harder to do than just paying for it, like we should have done in the first place - to the benefit of all.
If Custos are moving to new heights figuratively (and, they are), CubeSpace are doing so literally. Only 4 years old, CubeSpace are one of the leading global suppliers of system components for a specific kind of satellites - Cubesats. Cubesats are small, modular satellites built from standardised pieces – in much the same way as Lego – and are the most commonly launched satellites in recent years due to their flexibility and low cost. In fact, around 200 Cubesats, weighing between 1 and 50kgs were launched in 2016.
What makes CubeSpace so important in the world of Cubesats is that they put the technology before the business. And they have done so since day dot, when Prof Herman Steyn first proposed Cubesat technology as a research topic for masters students – more specifically on the control system of these CubeSats. This is one of the most important components, as the control system is what determines a satellite’s orientation, and allows it to point itself in a specific direction (much like the eyes and steering wheel of a person driving a car). This attracted hordes of engineers from around the country, and left a massive repository of IP at the University itself.
One of those students, Mike-Alec Kearney, decided to stay on and build a satellite for the massive QB50 project, on behalf of Stellenbosch University. The aim of this project was to launch 50 Cubesats into the thermosphere in order to study it, and drew in contributing universities from all across the world. What Mike-Alec and Co. didn’t anticipate was that they would end up building control systems for 20 of the other universities’ satellites as well. This control system which was refined through successful hands-on experience, was bundled into the products that CubeSpace develops today. From here, with the help of Innovus, they built a commercial business model and started marketing themselves as CubeSpace.
Their product offering runs from devices that can measure where the sun and earth are relative to the satellite (CubeSense), to an ultra-low power satellite computer called CubeComputer. Their newest product is an incredibly sensitive camera that can find the position of a satellite based on images it takes of the stars (the most accurate sensor in the suite). In addition, they build magnetic torquers that adjust a satellite’s rotation using the Earth’s own magnetic field as well as miniature reaction wheels that can quickly turn a satellite on its axis. And, with a lot of data coming back shortly from the successful QB50 project, their products will continually improve, and their range grow, further separating them from any competition.
CubeSpace makes some of the smartest products off the planet, and they make them for some of the smartest organisations on it. They currently boast NASA JPL, SSTL, the California Polytechnical University (the originators of the Cubesat idea), Stanford University and Columbia University as clients.
In the next few months CubeSpace will be officially spinning out, to stand on their own feet. This is testament to their skills as problem-solvers and engineers and, in part, due to the business acumen of Innovus. “Most engineers would rather die than do admin,” says Mike-Alec, “Thanks to Innovus we can focus on what we love.”
Both CubeSpace and Custos come from very different background, with contrasting skill-sets; one will solve the problem of digital piracy, while the other changes how we get information from off-planet sources. But both of them are going places, and getting their fast, and we couldn’t be more excited about the journey.
Four Technologies For The Future Of Medical, Environmental And Varietal Fields
What the Western Cape may be lacking in available water it’s making up for in forward-thinking, relevant ideas. In fact, one of those ideas, featured below, may even have a hand in solving the water crisis. It doesn’t stop there, though, as this month we’re highlighting but four technologies, representative of the problem-solving nature of Stellenbosch University, and there’s something for everyone – medical, environmental, or varietal.
Powasave is a solution to a problem most of us don’t even know we have. To understand how important the innovation is, you need to first consider exactly how much water is used to farm the fresh produce that sustains us daily. One of the most effective ways to water large areas of crops is through centre pivot irrigation systems – many of which you will have seen when driving through our arable farmlands. Dr Hanno Reuter, on one of his own journeys to Lamberts Bay, saw exactly what we see, but he wondered if there wasn’t a more efficient way of distributing the water up through the pivot, through the irrigation pipes and onto the crops.
It turns out his innovation, Powasave, is exactly this. By changing the traditional nozzles (and manufacturing them locally) on the irrigation pipes, he increased the size of the drops. This means that less water is blown away by the wind, and substantially more makes it to where it’s supposed to go. By incorporating additional pipes, running perpendicular to the existing radial arms, each with an integrated pressure regulating system, Powasave controls water pressure and distribution more effectively, uniformly distributing that water to the crops and reducing power consumption.
It’s a simple solution, but the ramifications are substantial. Not only can farmers reduce their water consumption (up to 20%), but also their power usage, leading to massive cost savings in the long term.
Currently, Powasave has been prototyped and tested, but it is still early days. With the right partner and the right team (contact Innovus for details) this may just be the innovation that makes a massive difference to the wallets of our farmers, as well as the natural resources of our country.
Concussion testing device:
Concussions can (and do) affect many different people, in a variety of age groups, in many different sports – rugby, hockey, horse-riding, athletics and even soccer - and they’re incredibly dangerous. But, unless you’re competing professionally, the chances that the bump on your head will be seen as anything more serious than that, are really rather low… Only specialists and doctors have the skills needed to correctly diagnose concussions (using manual eye-tracking, balance examinations, as well as cognitive memory and learning tests), which means that if you’re playing any community-based sport (university, high-school or club), and take a knock to the noggin, you probably won’t have immediate access to one…
There are concussion testing devices available, that aid the manual diagnostic function of a trained physician, but these are also a little above the pay grade of most schools or amateur sports organisations. They are also large, cumbersome and difficult for parents and coaches to use. This puts competitors at a massive risk of ‘Second Impact Syndrome’ where undiagnosed concussions sees players back on the field, exacerbating the effects of the initial damage by second or third hits and from which the brain cannot recover. This leaves once bright, energetic sportspeople on the road to depression, permanent cognitive losses and even early death.
A team at Stellenbosch University has recently developed a unique, usable and cost effective tool to check for possible concussions as soon as the incident happens. This is done through a VR headset, which creates a virtual environment in which a concussee’s balance, cognition, memory, and eye-tracking performance are checked quickly and efficiently – all at the same time. Best of all, this is done using the computational power of an Android smartphone, making it effective as well as – most importantly – accessible to all. The team behind it, Matie’s own Joshua Fischer, Dr Dawie van den Heever, and Dr Pierre Viviers, supported by input from team members in Brazil and South Korea, will be developing their innovation further (upping accuracy and computing speed) for the remainder of the year, in order to start proper testing on a pool of 1200 active rugby players in early 2018.
Universal X-Ray Phantom:
X-Ray devices – CT scanners, mammography, fluoroscopy and radiography units - need to be calibrated in order to give the best image quality. This is done by trained medical physicists using something called a ‘phantom’, which is an object which, when imaged, show exactly how ‘in focus’ the resulting images are. Also, this process needs to be repeated regularly to maintain the efficiency of these devices.
Up until now, each specific proprietary device has its own, specific, proprietary phantom, its own associated software application and separate operational training manuals… You can imagine the amount of time and resources wasted simply making sure each medical device operates at maximum efficiency. Thankfully, Annemari Groenewald, at Stellenbosch University’s Medicine and Health Sciences department, has developed a singular solution: a Universal Image Quality Assurance Phantom. This innovation (along with its universal software) can be used to evaluate, analyse and optimise the performance or a variety of different X-ray machines. Specifically, for the detail-orientated reader, the U-QA Phantom allows qualitative and quantitative tests of sensitometry, uniformity, resolution, noise, geometry, standard signal, low contrast detectability, alignment, artefacts, visual image quality inspection, CT slice thickness and mammography masses, fibres and micro-calcifications in general x-rays, fluoroscopy, mammography, and CT scanning.
And the best part? Its simplicity (an important aspect), and the fact that the data can be shared with remotely-located physicists, means that a number of different, less-specialised hospital staff can do the testing themselves with the same result. This is especially critical in resource-limited institutions, like government hospitals, where money, manpower and time are always in such high demand. It will also make a massive difference to the radiology department of any medical institution and has done so in the 3 (so far) hospitals it has been tested in.
If that wasn’t enough, the U-QA (yoU and Universal QA) Phantom and its software is also cheaper, looks as good and even comes in an attractive, portable flight case. That’s many, expensive birds, killed by one, efficient stone.
Web-based wine flavour wheel for South African Chenin Blancs:
When it comes to wine you may be a fan, you may know what you enjoy, but it’s unlikely you know enough about any specific wine to be able to use descriptors like ‘unctuous’, ‘cliff-edge’ or ‘austere’ with much authority. Chenin Blanc is one of the most widely planted varieties in South Africa (almost of 20% of all wine grown here is Chenin Blanc) and, because of its high acidy, many different kinds of wine can be made from it – dessert, sparkling and fortified. This makes it rather difficult for most consumers to make a decision on which varietal to purchase (personally, the writer goes by the label). Or to sound smart at cocktail parties.
A new web-based wine flavour wheel application for South African Chenin Blanc wines, developed using the research conducted at Stellenbosch University, in conjunction with the Chenin Blanc Society of South Africa and Winetech, will go a long way to making the wonderful Chenin Blanc varietal more accessible. It was designed to humanise the nebulous wine tasting process for ‘the rest of us’, by matching a specific activity to the most suitable Chenin Blanc wine. This isn’t just based on snobbish expertise, either, as opinions of both experts and laymen were taken into consideration.
Once fully developed, this application will be available on smartphones across the country, giving each of us equal opportunity to be ‘that wine guy’, as well as finally being able to pair the right Chenin Blanc with the right activity.
Unistel Medical Laboratories: The Premier Genetic Testing Facility in South Africa
Originally started in 1999, Unistel Medical Laboratories’ history is both rich and complex – and far too voluminous to go into in depth in this article. That said, it’s important to know that the company (as it was back then) was one of the first spin-out companies commercialised under the umbrella of the parent company, Unistel Group Holdings. UGH was actually Stellenbosch University’s first entrance into the word of technology transfer and was created to commercialise IP developed inside the University. In fact, UGH was the foundation for the Innovus we know and love today. More importantly, under the leadership of Dr Munro Marx (who is still Unistel’s MD), the company was started with zero debt and has continued to run flawlessly (and profitably) ever since.
Unistel was originially the routine diagnostic division of the academic Department of Human Genetics and offered testing services for both human and animal genetics. But, realising the dire need for accurate and reliable genetics testing for everyone from pathologists, physicians and farmers to our police force, it made sense to commercialise the operation. On 1 November 1999, a company who is passionate about serving the greater world, and using its specialised services to create a better one, opened its doors. This passion is one of the reasons, according to Dr Marx, why the business has grown so substantially since its inception.
And grow it has. Both in reputation, and in profit – without sacrificing the needs of its clients. Processing over 15 000 genetic tests a month, they are probably the largest genetics testing facility of its kind in South Africa, and the busiest paternity testing lab in Sub-Saharan Africa. As the expert witnesses in many prominent cases, including the murder case of Marike de Klerk in 2001, they are now the go-to team for forensic DNA profiling across the country. Even specialist game, horse and dog breeders in Europe (let alone South Africa) rely on them for efficient testing and screening, because they will receive their results back in a significantly shorter turnaround time than Unistel’s European counterparts (Unistel are often up to four times faster). Because of this, the list of Unistel’s shareholders includes pathologists and medical practices – who are also clients – as well as Innovus and the University. That’s credibility right there.
Their services now cover molecular diagnostic DNA tests and procedures, chromosome analysis, fluorescence in situ hybridization analysis (both interphase and preimplantation genetic testing) and even genetic counseling for families. These are all critical in the diagnoses of in utero diseases, leukemia, microdeletion syndromes and rare diseases, as well as the forensic and paternity cases (mentioned earlier), which have as much of a human ramification as a medical one. This is something Unistel are intimately aware of. “We run seven days a week,” says Dr Marx, “because we know how much stress waiting for results can cause, and how crucial those results can be.”
To service this flourishing response to their expertise as well as their very real compassion, Unistel’s staff compliment has grown to over 50, many of whom are Maties students, while their turnover is expected to exceed R49m - with a healthy profit - this year. This commercial laboratory, grown in the expertise of Stellenbosch University, is branching out even further, and expects to service even more markets in the very near future.
The TIA Seed Fund: A Bridge To Help You Cross
It’s that time of year when the call goes out to all corners of our nation. The call is from the Technology Innovation Agency, and it’s to find new Seed Fund recipients – those who have the idea, and the vision, but need the financial bridge to get from one to the realisation of the other. To do so, TIA has given grants of up to R650 000, depending on the requirements of the recipient
If you think you’re worth it, and meet the right criteria for funding, you will find yourself in great company, because 2017 has already seen four strong projects being granted that extra boost they need to build their businesses into a commercial reality.
The first was Cargo Telematics, who developed a dynamic cargo strap monitor, which stop loads shifting during long-distance truck hauls. This innovation constantly measures the tension of the strap holding massive containers to their mounts, and immediately makes adjustments whenever that tension changes. This keeps the load’s balance constant, and the tonnes of stacked containers firmly where they’re supposed to be – all in less than a second. It combines this information with braking and cornering data from an in-built accelerometer, meaning that the Cargo Strap Monitor knows exactly what’s going on, even if the driver doesn’t. Cargo Telematics received a generous amount of funding from the TIA Seed Fund to make our roads safer.
The team behind the upscaling of Sceletium production received a substantial grant, which will help them find a way to establish a commercially successful biotechnology business, which will be built around a unique method of producing plant alkaloid material. Sceletium, a plant, is used traditionally to alleviate hunger, relieve pain and can have significant effects on mood, stress and tension (for the better). Thanks to the small scale bio-reactor the team wants to build, the bio-actives (the active ingredient in Sceletium) will be more accessible, and will reach industrial levels of production.
Third we have an innovative approach to in situ photovoltaic monitoring. This is less complicated than it sounds, and more important than you may think. Most solar (photovoltaic) power plants are unmanned, and all experience dust accumulation on the surface of their cells. This reduces the effectiveness of the cells and reduces the amount of power generated. This invention will be installed in situ in PV power plants to monitor the performance of individual cells, and optimising their output.
Lastly, we have something this writer will be investing in as soon as it hits the shelves – the Smart Kettle. In alpha stage right now, the kettle aims to use a rapid boiling system to boil a certain amount of water faster, which saves energy and time for the user, as well as being what the inventors call ‘functional art’ – it must look good. Their ultimate aim is to create a collectable 3-piece set that will adorn kitchens and boardrooms throughout the world. And, with the well-deserved seed funding from the TIA, their chances of achieving it are significantly increased.
This year, however, there’s more in store for the worthy beneficiaries. The funding amount has been increased from R500 000 to an impressive R650 000 cap. This will further help innovators and researchers change the world and, in doing so, change their own lives. Who knows; this could be you.
For more information contact: email@example.com
Does experimental use of a patented invention constitute patent infringement in South Africa?
Ilne van der Westhuizen
Ralph van Niekerk
The question as to whether experimental use of a patented invention constitutes patent infringement is particularly relevant to entities involved in research and development, such as universities, research institutions and innovative companies. Research and development is often incremental and based on the work of others. Does using a patented invention for the purpose of research amount to infringement?
Generally, anyone who uses a patented invention without authorisation is liable for patent infringement. Many countries such as the United States (US), the United Kingdom (UK), Germany, China and Australia recognise experimental use as an exception to this general rule, albeit in narrowly defined circumstances. A patent is aimed at providing the patentee with a monopoly of 20 years for publicly disclosing an invention. It seems fair that experimental use of a patented invention should be exempted from infringement in circumstances where such use would not encroach upon the patentee’s market. Ideally, patents should not be used to create unnecessary obstacles to technical development, but must encourage it and result in knowledge sharing.
However, in terms of current South African law, a researcher is probably not permitted to make use of a patented invention to conduct further research or experiments on it without authorisation. This is likely the case even if the researcher only intends to experiment to obtain new information and does not have an intention to exploit the results commercially.
Contrary to the situation in many other countries, The South African Patents Act no. 57 of 1978 (“the Patents Act”) does not expressly provide for a research or experimental use exemption from infringement. On the one hand, it may be argued that there is an implicit intention to exclude non-commercial use that is to be read from the definition of infringement in the Patents Act. In terms of section 45(1) of the Act, the “effect of a patent shall be to grant to the patentee in the Republic… for the duration of the patent, the right to exclude other persons from making, using, exercising, disposing or offering to dispose of, or importing the invention so that he or she shall have and enjoy the whole profit and advantage accruing by reason of the invention”. The reference to “profit and advantage” could be construed as meaning that non-commercial use would not fall within the ambit of the acts prohibited by section 45(1) and thus avoid patent infringement. On the other hand, the patentee may be afforded quite broad protection by the inclusion of the term “advantage”. It could be argued that any new knowledge obtained from experimentation could be seen as an “advantage” in a broad sense and that experimental acts should fall within the patentee’s right to exclude.
Our courts have not yet fully considered this matter. In Stauffer Chemicals v Monsanto Company it was mentioned that experimental use of an invention would constitute “use” for the purposes of patent infringement. The High Court considered whether the use of a patented invention to prepare for marketing registration of a similar product constitutes infringement. The court held that such activity used the patented invention as a springboard to obtain an improper advantage, i.e. a commercial advantage. It remains to be seen if experimental use of a patented invention without any prospect of a commercial advantage would be allowed by our courts.
Since the Stauffer cause, the South African Patents Act has been amended to allow experiments to be conducted to obtain regulatory approval under a particular law, such as experiments aimed at obtaining regulatory approval for marketing a medicine or agrochemical. This is a so-called “Bolar provision” which was introduced in 2002 and in terms of which it is not infringement to use a patented invention “on a non-commercial scale and solely for the purposes reasonably related to the obtaining, development and submission of information required under any law that regulates the manufacture, production, distribution, use or sale of any product” (section 69A). This exception is not limited to medicines but applies to any product in respect of which a law requires the submission of information relating to how it is made, distributed or sold. Most countries have a similar provision in their law, although in some countries its application is limited to medicines only.
The South African Bolar provision does not allow for experimental use in circumstances where information will not be submitted to a regulatory authority in terms of a specific law. Since South African law does not expressly exempt all experimental use from constituting patent infringement, the situation is less favourable for researchers than in some other countries. The uncertainty about whether patent rights may restrict research activities may discourage researchers from working in fields of technology where there are many South African patents and there is a risk of being sued for infringement. It remains to be seen whether some form of implicit experimental use exemption will be recognised in South African law. For the time being it is probably best to be aware of the risks of working with patented inventions.
Of course, patents are territorial and only provide protection in the country in which they are in force. If it has been determined that there is a patent in South Africa, and whether any patents found are is still in force. If the patentee has not paid the annual renewal fees, the patent will have lapsed. If it is discovered that a South African patent is in force and the experimental use of the patented invention falls within the scope of the claims of the patent, there is a risk of being sued for patent infringement. Practically, it is probably safest to first acquire the rights to use the invention from the patentee.
It is not only South African researchers that need to be aware of the risk of patent infringement for experimental use. In the US, experimental use of a patented invention is recognised as an exemption from patent infringement only if such use is not for the furtherance of a legitimate business purpose. This is a longstanding common law exemption. However, a number of cases over the past 20 years have significantly narrowed the scope of the experimental use exemption which is now “limited to actions performed for amusement, to satisfy idle curiosity or for strictly philosophical inquiry”. This exemption is not likely to be available to academic institutions. The decisions of the US Federal Courts have rendered the use of a patented invention for testing, designing around a patent or in pursuit of scientific knowledge too closely related to business interests so that it still constitutes infringement.
In the UK, there is an “experimental use” exemption which provides that acts performed for experimental purposes shall not be infringement, provided that such acts relate to the subject-matter of the invention. The UK courts has interpreted “experimental use” as relating only to tests designed to obtain new information about the patented invention, and not for the confirmation of previously-obtained results as would be the case in clinical trials. New legislation has been proposed to broaden the definition to include experiments for medical product assessment to allow for clinical trials of generic medicines as well.
Similarly, Germany also provides that the rights conferred by the patent shall not extend to acts done for experimental purposes relating to the subject matter of the patented invention. This provision has been applied more broadly in Germany than in the UK, as the German courts have decided that clinical trials are also permitted as long as the experiments are not performed solely to obtain data for clinical approval, but are also aimed at discovering something unknown about the patented invention. In other words, commercial use should not be the only reason for conducting the experiments, but could still be a motivating factor.
Chinese patent law provides that use of a patent solely for the purposes of scientific research and experimentation shall not be deemed an act of infringement. There are no decisions relating to this exemption in China, however this provision has been interpreted quite narrowly to relate to scientific research and experimentation carried out specifically on the patented technology as such. Consequently, comparative tests and clinical trials of generics based on a patented product are not exempted. The use of the patented invention as a means or research tool is not allowed in China.
Australian law was amended quite recently by The Intellectual Property Laws Amendment (Raising the Bar) Act 2012 to include an exemption that covers work done for experimental purposes relating to the subject matter of the invention. Their law quite clearly exempts tests, trials and procedures that a research or follow-on innovator undertakes as part of discovering new information or testing a principle or supposition from infringement. The Australian government also recognises that research is undertaken for mixed purposes. Purposes such as contractual research, research with a commercial partner or research with a view to ultimately commercialising the end-products of the experiments still fall within the ambit of the exemption. Consequently, if the research is directed to discovering new information or improving a patented invention, such experimental use is allowed even when contemplating commercialisation of the improvement. The new Australian law ensures that research and follow-on innovation is not hindered by concerns of infringement which may impinge on freedom to research.
New technology should benefit society as a whole. An experimental use exemption to infringement will allow researchers to study and improve technology more freely. However, a balance must be sought to ensure that the patentee is still rewarded with a protected market for its innovation. The uncertainty as to whether experimental use of a patented invention will be regarded as infringement by South African courts creates a precarious environment for researchers and clarification by the legislature or the courts would be a welcome development.
INNOVUS TEGNOLOGIE OORDRAG (EDMS) BPK | Universiteit Stellenbosch
DE BEERSTRAAT 15
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