Assignment of Invention – the importance of the assignment date and impact on patent validity

March 2025

Abstract

In the recent case, Regents of the University of California and Others v Eurolab (Pty) Ltd and Others ( 2024-039643 ; 2023-108509) [2025] ZACCP 1 (25 February 2025) the Court of the Commissioner of Patents for the Republic of South Africa found that the right for an applicant to apply for a patent must have already been acquired by assignment or some other means before filing of the patent application. On the facts presented to the court, it was found that no assignment existed at the time of the application and revoked the patent on the grounds of the application not meeting the requirements of Section 27(1) of Patents Act 57 of 1978.

Authors

Madelein Kleyn

Chief Legal and IP Officers, Omnisient Rf Pty, South Africa

Dr. Madelein Kleyn has more than 30 years international experience as intellectual property practitioner, patent attorney and in-house legal counsel in the petrochemical and agri industries. She is presently the Chief Legal Officer of Omnisient (Pty) Ltd a company specializing in data collaboration and anonymization . She also is the CEO and founder of Mad K IP consulting (Pty) Ltd a private company advising clients on IP matters. She is a qualified chemical engineer (BSc Chem Eng), an admitted attorney of the High Court of South Africa and a registered South African patent attorney. She holds a LLM in tax law and PhD in intellectual property law. Her technical expertise is in the area of petrochemicals, chemistry, process engineering, explosives and agriculture. Madelein’s main areas of expertise include IP Portfolio management, IP policy and strategy development and implementation. She regularly advises on corporate governance and IP risk management and specializes in drafting and advising on IP-related business transactions, including technology transfer and licensing. She has authored and presented various articles, papers and publications on IP matters internationally specifically on technology and IP licensing and commentaries on national IP related legislation. Since 2014 she is the co-editor of the textbook “International Pharmaceutical Law” and is also a co-author of the South African Chapter of this publication. She is a member of the SAIIPL (South African Institute of Intellectual Property Lawyers) and also the editor of the SAIIPL newsletter IP Briefs™. She is a member of INTA (International Trademark Association) and CCASA (Corporate Counsel Association of South Africa), ACS (American Chemical Society) and SARIMA ( Southern African Research & Innovation Management Association). She is also member of LES (License Executive Society of South Africa - past president) and a Vice President of LES International. Madelein was included in the IAM Strategy 300 – The World’s Leading IP Strategists since 2015 and featured in WTR300 World’s leading trademark professionals since 2016 and included in IAM Global leaders 2023 and 2024

Janusz Luterek

Partner, Hahn & Hahn Attorneys, South Africa

Janusz Luterek prior to qualifying as an attorney, worked at the CSIR in its Division of Food Science and Technology where he was specifically involved as a Food Engineer in brewing and fruit processing. Later, Janusz worked as a Senior Process Engineer at APV International where he was responsible for the design and commissioning of brewing equipment, fruit juice processing equipment, fruit juice evaporators, milk pasteurization, and cheese and yoghurt production. Janusz has assisted many leading listed companies as well as SAAFoST with their various Foodstuffs, Cosmetics, and Disinfectants Act and Regulations, Medicines and Related Substances Act and Regulations, and Consumer Protection Act submissions to various Government Departments and Parliament as well as implementation in their businesses. This in-depth and ongoing involvement in the process has given Janusz special insight into Food Law and the Consumer Protection Act. Janusz provides his clients with assistance in the areas of: • Consumer Law • Food Law • Intellectual Property Law (related to food law) • Regulatory and Compliance • Litigation • Complementary Medicines Most recently Janusz represented the Consumer Goods and Services Ombud in a Declaratory Application before the High Court to determine which companies fall under the jurisdiction of the CGSO. The Application was heavily opposed by several listed companies but the Hahn & Hahn team prevailed on behalf of the CGSO. Yet further, Janusz ran a matter relating to the dairy regulations under the Agricultural Products Standards Act and again Janusz prevailed for his clients with victory in the SCA and before the DALRRD Appeal Board in favour of his clients. Presently, Janusz is involved in advising several leading companies on the draft food labelling regulations (R3337) and possible challenges thereto. At the moment Janusz is assisting a number of companies with the peanut butter recalls in South Africa necessitated by aflatoxin above permitted levels.

Companies

Omnisient Rf Pty

Omnisient provides Software platform that allows for secure, compliant and transformative Data Collaboration. We help businesses unlock the power of 1st party data collaboration without the risks. Mad K IP Consulting (Pty) Ltd is a private IP consulting business that assists clients with IP Strategy development and assisting with commercialisation of IP. www.mad-ip.com

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Assignment of Invention – the importance of the assignment date and impact on patent validity

Abstract

Authors

Companies

Omnisient Rf Pty

Hahn & Hahn Attorneys

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