The protection and commercialisation of genetic resources, indigenous knowledge and indigenous cultural expressions have come to the fore internationally during the past 20 or so years. The realisation that genetic resources and indigenous knowledge can yield valuable drugs and treatment for the world's diseases on the one hand, and the adoption of the music or songs of indigenous communities without their consent or acknowledgement on the other hand, has led to concerns that protection is required to prevent abuse.
South Africa responded by publishing the Protection, Promotion, Development and Management of Indigenous Knowledge Systems Bill 2016 under the direction of the Department of Science and Technology for comment in 2015, and introducing the amended bill in the National Assembly in April 2016.(1) The bill seeks to introduce a sui generis approach to the legislative protection and commercialisation of indigenous knowledge systems, and is to be welcomed.
The bill follows the Intellectual Property Laws Amendment (IPLA) Act 2013, which was signed into law on December 10 2013 after a difficult and protracted journey through the National Assembly. The IPLA Act deals with the amendment and 'grafting' of indigenous knowledge and indigenous cultural expressions on to four IP acts using an IP-based approach to the protection of indigenous knowledge systems. The IPLA Act will come into force on a date to be determined by the president by proclamation in the Government Gazette (after regulations have been approved for the acts).
The IPLA Act amended four IP acts: the Performers' Protection Act, the Copyright Act, the Designs Act and the Trademarks Act. In so doing, it provides for recognition and protection of, and creates, new IP forms (so-called 'indigenous intellectual property') for indigenous performances, indigenous copyright works, indigenous designs and indigenous trademarks, respectively. In addition, the IPLA Act creates new derivative IP forms in line with the above, which are IP forms adapted from the original indigenous forms. The IPLA Act defines an 'indigenous term' as including indigenous cultural expressions or knowledge. This inclusion of indigenous knowledge with indigenous cultural expressions in acts that do not, in principle, protect technology is a mistake.
The IPLA Act provides that the minister of trade and industry will establish the National Council for Indigenous Knowledge to, among other things, advise the minister and the relevant IP rights registrars on these and other relevant matters.
Finally, the IPLA Act provides for the commercialisation and licensing of indigenous knowledge and indigenous cultural expressions in an attempt to provide income to indigenous communities from the marketing of their indigenous knowledge and indigenous cultural expressions.
The bill provides sui generis protection of indigenous knowledge, including:
- the registration of indigenous knowledge;
- the establishment of the National Indigenous Knowledge Systems Office (NIKSO); and
- an advisory panel to advise the NIKSO.
The following important definitions are provided in the bill:
- 'Indigenous cultural expressions' means expressions with cultural content developed within indigenous communities and assimilated into their cultural make-up or essential character, including but not limited to:
- phonetic or verbal expressions;
- musical or sound expressions;
- expressions by action; and
- action-tangible expressions.
- 'Indigenous knowledge' means knowledge which has been developed within an indigenous community and has been assimilated into the cultural make-up or essential character of that community, including:
- knowledge of a scientific or technical nature;
- knowledge of natural resources; and
- indigenous cultural expressions.
The bill protects indigenous knowledge, whether functional, cultural or both, including medical, agricultural or scientific practices, provided that it complies with the eligibility criteria set out below. Such indigenous knowledge is regarded as being 'property' as defined in Section 25 of the Constitution.
Protection applies to indigenous knowledge which:
- has been passed from generation to generation within an indigenous community;
- has been developed within an indigenous community; and
- is associated with the cultural make-up and social identity of that indigenous community.
The term of protection granted in respect of indigenous knowledge will last for as long as the indigenous knowledge satisfies the above eligibility criteria for protection.
Holders of indigenous knowledge registrations enjoy the exclusive rights to:
- the benefits arising from their commercial use;
- be acknowledged as their source; and
- restrain any unauthorised use of the indigenous knowledge.
The functions and duties of the NIKSO (which will be a non-juristic entity) include:
- keeping a register of indigenous knowledge;
- establishing a registration office; and
- accrediting and certifying indigenous knowledge practitioners who may be recorded in the register of designations kept by the NIKSO.
The NIKSO will also handle the registration of indigenous knowledge on behalf of an indigenous knowledge holder. A person seeking to obtain a copy of documents from the register of indigenous knowledge must first enter into a non-disclosure agreement with the NIKSO.
In performing its functions, the NIKSO must develop and implement an effective regulatory framework for the protection, promotion, development, management and education in respect of indigenous knowledge systems. The NIKSO may, at the request of an indigenous community, provide assistance or facilitate the commercialisation and use of its indigenous knowledge.
If the holder of indigenous knowledge cannot be identified and designated, the NIKSO must act as custodian of that knowledge.
A person wishing to acquire the right to use indigenous knowledge must apply to the NIKSO for a licence and enter into a benefit-sharing agreement with the NIKSO.
Any person who uses indigenous knowledge without authorisation, or who otherwise contravenes certain important provisions of the act, shall be guilty of an offence and liable to imprisonment for up to three years, a fine of R30,000 or both.
Indigenous knowledge originating in a foreign jurisdiction must be afforded the same protection as indigenous knowledge originating in South Africa, provided that the laws of the foreign jurisdiction extend reciprocal protection to indigenous knowledge originating in South Africa. The sharing of ownership of indigenous knowledge is possible where indigenous knowledge originates in one or more foreign jurisdictions and in South Africa.
An indigenous knowledge holder wishing to register indigenous knowledge which existed before the entry into force of the new act must register such indigenous knowledge within 12 months of the date of entry into force.
Under the bill is appears that there will be an overlap or duplication of protection if, for example, an indigenous design is registered under both the IPLA Act and the bill. This is inadvisable for obvious reasons.
The bill also requires that for protection to apply, all indigenous knowledge must be registered under it. This requirement is not ideal, because non-registration is clearly preferable to registration, which is costly for:
- the state, which must establish and operate a registration office and relevant systems; and
- indigenous knowledge holders, who will generally need to employ legal advisers to assist them with registration.
Non-registration works well – for example, the Copyright Act provides that copyright protection comes into effect without any form of registration. In addition, and as a practical consideration, it is highly probable that sangomas and similar knowledge holders will refuse to register their indigenous knowledge because this information is invariably held as secret in indigenous communities. Accordingly, they will refuse to disclose secret information to an unknown official in Pretoria. In addition, interested parties will be able to obtain copies of such documentation on request and payment of a prescribed fee. It would be preferable if registration was removed as a requirement from the bill.
The bill also requires that all existing indigenous knowledge were be registered within 12 months of the act coming into force. As well as the reason for this being unclear, it is also impractical and imposes an enormous burden and time pressure on indigenous communities to comply.
The bill clearly protects indigenous knowledge whether it is functional or cultural in form, or both – and such protection can extend in perpetuity.
The NIKSO and its staff will need considerable skills in marketing and negotiation activities, including promoting partnerships for innovation and product development, coordinating funding, developing marketing strategies and promoting the commercial use of products, services, processes and technology. Highly skilled officials will be required for this purpose.
The penalties provided in the bill include imprisonment, a fine or both. These are inconsistent with other IP statutes, under which relief for infringement of rights or unauthorised use is an interdict, delivery up and damages (or a reasonable royalty). Such civil remedies should also be introduced in the bill.
Finally, the parties consulted to date are merely other government departments. No indigenous communities or their leaders have been consulted, and no regulatory impact assessment has been carried out to determine, among other things, whether the benefits of the bill to the South African community will outweigh the costs of implementing it.
For further information please contact Andre van der Merwe at KISCH IP by telephone (+27 11 324 3000) or email ([email protected]). The KISCH IP website can be accessed at www.kisch-ip.com.
(1) The explanatory summary was published in Government Gazette 39910 (April 8 2016).