Following the President’s announcement of a twenty-one day lock down in South Africa to fight the spread of COVID 19, the Patents & Designs, Copyright and Trade Mark Divisions of the Companies and Intellectual Property Commission (cipc), gave notice (Notice 19 of 2020) that they will be closed to the public from Wednesday 25 March 2020 until Thursday 30 April 2020.

This lock down of the Patents & Designs, Copyright and Trade Mark division of cipc is starting earlier and ending later than the President’s twenty-one day lock down period.

These dates will be regarded as “dies non” for purposes of the Trade Marks Act, the Patents Act, the Design Act, the Copyright Act and the Registration of Copyright in Cinematograph Film Act. This means that these days do not count for legal purposes.

Leaving aside the maths underlying the “dies non”, cipc has said that responses to official communications from cipc, documents relating to extensions of any time periods, documents relating to legal proceedings, “etc” that fall due during the dies non period are now extended and will now fall due on 1 May 2020.

In practice this means that all “internal and external facing” cipc IP systems are not available, no manual lodgments of documents can take place, the Patent Journal will not be published for March 2020, no requests nor emails will be attended to, processed or responded to in this period, the electronic query system of cipc will not be available and the cipc call centre will not be available.

It remains to be seen how this plays out, but currently no trade mark availability searches or filings can be done in this period, in addition to the dramatic impact on other intellectual property rights

It is critical to save lives and protect the vulnerable in the society and hopefully these measures will aid with this. This does mean that there is going to be a big economic impact, including on the roll-out of new brands, business and the like. Not being able to conduct trade mark searches (amongst other intellectual property right consequences) means that it is a lot more difficult to determine the “freedom to operate” for any new brand, slogan or concept. Certainly, it seems that there is going to be no movement in any applications at cipc in this period and no new applications can commence.

This period can however be used do the work which can be done:

  • Review current portfolios to ensure that they are protected and relevant;
  • Consider and review current ownership and structures;
  • Proceed with IP transactions which are not dependent on cipc. For example, assign rights of copyright; and clarify and if necessary, assign ownership of trade marks, patents and other intellectual property rights – the deeds of assignment can be lodged when cipc reopens;
  • Negotiate and agree upon licences;
  • Draw up and sign contracts for the development of software, artistic works, literary works and other products which may have rights of copyright or other intellectual property rights; and
  • Enter into NDAs and agreements with a view to new business.

Most intellectual property lawyers will be available to clients via various on-line platforms for consultation, advice and drafting agreements (which can be signed electronically or via emailed copies). The temporary closure of cipc should not be viewed as a shut-down of all commercial intellectual property activities.

There will be opportunities for innovative and creative business emerging out of this current situation. It may be a good idea to take some time in this lockdown period to pause and reflect on these, and then to move forward and do the work that can be done.

Bruce Lister
25 March 2020