Dr Alwyn Bernard Dippenaar | Senior Associate | Patent Attorney | KISCH IP | mail me |
There are many legal solutions for enforcing your Intellectual Property (IP) rights once you have created an invention.
The scenario
Imagine you are part of a team of ambitious entrepreneurs that have a developed revolutionary medical device that is set to shake up the industry.
One of the team members wisely advises that you register the following IP rights in respect of your invention which will include:
- A patent directed to the novel medical device;
- A registered design for a uniquely shaped mount, which allows for the medical device to have an increased range of motion;
- A trade mark for your company logo which closely resembles the shape of your novel medical device; and
- While not registrable, you should install software on the devices of all engineers involved in the company so that you have drawings and software – protected by copyright – stored on a dedicated cloud server.
An independent valuation expert values your company, its present, and future penetration in the medical market at an impressive R2 billion. On hearing this news, one of your employees downloads all of the drawings on a hard drive and approaches a leading competitor in the market with the stolen information.
The competitor offers him a hefty salary increase and tasks the former employee to lead a team to start manufacturing the novel medical devices by utilising the stolen files together with the published patent directed thereto.
A few months after the commercial launch of your product, one of your employees informs you that a cheaper and near-identical device has been launched in the market.
The advice
You immediately notice a downturn in your sales and your current clients have sent you a picture of the competitor product, which to your surprise, displays a carbon copy of your medical device, the uniquely shaped mount, and your company logo imprinted thereon. You are now tasked to enforce your rights.
You contact your IP attorneys who assisted you in filing your patent, registered design and trade mark applications.
They advise as follows:
Where you have concerns that the competitor would possibly destroy evidence which could be used in support of your damages claim, experienced firms would routinely employ Anton Piller procedures whereby an ex parte application is used to remove such items from the competitor’s premises. Importantly, the competitor is not informed as this would defeat the purpose of an Anton Piller application.
The court will only grant an order for the Anton Piller provided:
- there is prima facie (on the face of it) cause of action;
- the competitor is in possession of relevant and specified evidence required to prove damages; and
- there is a well-founded apprehension that the evidence will be destroyed.
Alternatively, as the competitor has elected to sell products protected by your patent and registered design that also show your trade mark logo, a letter of demand is often effective to urge a party to remove their products from the market and pay a reasonable royalty for products sold to date.
The application for a relief
Where the competitor fails to remedy their infringement within the time period specified in the letter you will have to approach the courts for relief. Here, your IP attorneys will advise on the steps forward as they relate to your specific circumstances.
Typically, an application for an interim interdict (on an urgent or semi-urgent basis) pending an action for a final interdict and damages, is a useful tool to stop infringement in its tracks.
The damages claimed could be in the form of a lump sum in respect of actual damages or alternatively in the form of a reasonable royalty for each article sold. You are further entitled to claim the delivery up of all infringing material.
Both the interim and the final interdict will prohibit the competitor from manufacturing, selling, and distributing the infringing material. Interdicts (whether interim or final) are either prohibitory, mandating or restitutionary in nature. Prohibitory interdicts prevent or stop a party from acting in a particular manner.
Mandating interdicts compel a party to act. Restitutionary interdicts serve to have a party’s property returned to them. In regard to the situation with the medical device a prohibitory interim interdict could provide the necessary relief as it would prevent the competitor from selling your medical technology protected by several forms of IP.
In conclusion
In another scenario you may notice that there are several counterfeit products identical to your invention which are imported by flouting customs and border control rules and as a result the market is flooded.
An IP attorney will make the authorities aware of the situation and they will ensure that they don’t enter or leave the country. If you have information on where the counterfeit products are manufactured the attorney can organise (with the authorities) a raid in order to identify the relevant counterfeits.
The popularity of e-commerce and internet-based services has also seen a sharp increase in fraudulent websites purporting to sell products.
Once payment is accepted, they often don’t deliver the product(s). These fraudulent websites also negatively affect the reputation and goodwill of the official company and the redress would be for IP attorneys to assist in taking down the fraudulent websites and possibly instituting legal action against the fraudulent perpetrators.
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