Please Call Me: My employer won't pay for using my Patent
#PleaseCallMe #Vodacom #SouthAfrica # Nigeria #Intellectualproperty #KennethMakateNkasana #Patentinfringment
Dear #IPFriend,
Welcome to the weekly edition of the #IPSERIES newsletter. My name is Rita Anwiri Chindah, a legal advisor on intellectual property, information technology & arbitration, and I’m glad to be back with the third edition. I’ll provide weekly updates on trending global issues with an African bias and with forward-looking opportunities.
Are there stories you’re keen to have me dig into? Share a lead with me: ipseriesinfo@gmail.com and follow me on Twitter at @esmeralo99
What is the back story?
Sometime in 2000 Kenneth Nkosana Makete got a job to work as a trainee accountant at Vodacom (Pty) Ltd and in November of the same year, he also got into a long distance relationship with his girlfriend (now wife) but they were having difficulty communicating because she was always out of airtime. This incident gave him the idea to invent a short text was for those who had no airtime but had to send request to the other cell phone user who has airtime to call the former. In 2001, he invented the short text “Please Call Me”. Aww isnt that cute?
So, Makete put his idea into writing, met with his superior and mentor at Vodacom on how he could sell “Please Call Me” to other cell phone service providers, including Vodacom. His mentor, Mr Lazarus Muchenje advised him to speak to the Director of Product Development and Management, Mr Philip Geissler.
The road to securing a deal
Makate and Mr Geissler negotiated and agreed that Vodacom would use his idea to develop a new product which would be put on trial for commercial viability. If the product was successful then Makete would be paid a share in the revenue generated by it. Makate stated he wanted 15% of the revenue, the parties deferred their negotiations on the amount to be paid to Makate for a later date. However, parties agreed that in the event that they fail to agree on the amount, Vodacom’s Chief Executive Officer (CEO) would determine the amount. Sounds cool right?
The Journey to Court
Coming from a jurisdiction where intellectual property is yet to be considered an asset and unauthorized use of a work seems to be on rise. The perception intellectual property owners have is that infringement cases are usually expensive to litigate and end up spending years in court with no hope of judgment in site. For instance, this is the 20th anniversary of this case between Makate v Vodacom (Pty) Ltd while Makate has since left Vodacom’s employment two and a half years after the launch of the product. He went further to institute an action in the High Court in 2008 to enforce his agreement with Vodacom by seeking an order directing Vodacom to comply with its obligations under the parties’ oral agreement.
Now the issue with oral contract is that sometimes it is difficult to enforce and elements can be distorted which is why it is important for intellectual property owners to document every discussion by having a proper contract stating what relationship the parties are willing to have and enter into.
Update/Recent development
In 2016 the Constitutional Court ruled that Vodacom had to enter into negotiations with Makate to find fair compensation. After this, Joosub offered R47 million, to which Makate said it was not enough and demanded more than R10 billion.
Quick thought
What is a patent? The World Intellectual Property Organization (WIPO) defines it as an exclusive right granted for an invention which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem thereby preventing others from commercially exploiting the invention which is what Makate tried to do by suing Vodacom. Please take note that the Nigerian Patent Act and the the South Africa’s Patent Act provides three conditions which must be met before it can be granted:
The invention must be new/novel
Should not be obvious to a skilled person
Capable of industrial application
Implications of not registering your patent is that you wont enjoy the exclusive rights intellectual property owners. According to a statistics report by African Regional Intellectual Property Organization (ARIPO) in 2019, 9 out of the 20 member states registered a total of 656 patents under the national phase and 9,604 under the Regional (Harare Protocol) while the World Intellectual Property organization (WIPO) statistics for filing (Resident + Abroad, Including Regional) patent in 2019 by South Africa reported that 1,514 patents was filed.
Authorship and ownership as the law states
An author is said to be the person who created the work and expressed it, which in this case that is Makate; while the owner can be the person who made contributions however, this can be determined if there is a contract stating that the person was commissioned or hired to do the work and/or the the person was in employment
In an email dated 9 February 2001, Mr Geissler’s addressed the company staffs acknowledging Kenneth Makate as the owner and author of the invention which read as follows: ‘Kenneth Makate from our Finance Department came up with this idea a few months ago and brought it to the Product Development Division. We wish to thank Kenneth for bringing his idea to our attention and was further acknowledged in a Vodacom’s newsletter published in March 2001.”
It has been a trend for big telecommunication company not to respect and get consent, authorization and permission (CPA) to use the inventions of intellectual property owners which helps improve the functionality of their service/product. For instance, in this case of Enovsys LLC, v. Nextel Communications, Inc., Nextel of California, Inc., Nextel Communications of the Midatlantic, Inc., Nextel of New York, Inc., Nextel South Corporation, Nextel of Texas, Inc., Nextel West Corp., Sprint Nextel Corporation, Sprint Communications Company L.P., Sprint Spectrum L.P., and Sprint Solutions, Inc., which was a patent infringement over the use of global positioning satellites (GPS) and ground control stations to determine physical location location of mobile devices, like pagers and cellular telephones of which the inventor which the inventor Mundi Fomukong won at the end of the day.
Available remedies
When an intellectual property owner sues an infringer and is successful, the owner is entitled to the following remedies for a civil action
An injunction
An award of costs
Damages or an account of profits
Delivery up/destruction of infringing items and items used to make them
South African Intellectual property system against the Nigerian Intellectual property
Because Intellectual property is territorial in nature, it is important for intellectual property owners to make enquiries regarding existing regulations. The South African patent Act provides for infringement proceedings to be held before the Court of the Commissioner of Patents, part of the High Court of South Africa whereas in Nigeria, the Patent Act provides the Federal High Court as the court of law with the jurisdiction to hear patent dispute,
However both jurisdictions have a term of duration of 20 years for an invention but but must be renewed.
Expectation
Hopefully, the court takes the lead in deciding on the appropriate compensation and not confer the responsibility on the CEO of Vodacom to decide what a fair settlement should be compensated to Makate.
A Conspiracy at play?
I think Vodacom is reluctant to pay the compensation to Makate. Why? For the simple reason that the term of duration of 20 years for the patent would expire and the invention will go right back into the public domain. Or what do you think? And do you think that it is right for compensation to be paid for intellectual property that was in dispute and has gone into public domain?
Recommendation
Find out the intellectual property policy the company you work for has in provision.
While I encourage out of court settlement, I opine that we need more cases to go to court so we have precedents in Africa that can foster the development of a more structured and universally accepted Intellectual Property African standard on the African continent.
Intellectual property owners should always opt for a multi-layered protection to leverage legal support system.
Consulting the services of an intellectual property lawyer in the event of a dispute will save the heartaches that come with deploying social media threads.
Be informed that intellectual property does not protect ideas, but creative work that is original and in a fixed medium and invention; you must have something distinct to show.
As an intellectual property owner, know that you can commercialize your creation or invention by either selling/assigning your work or licensing your work in an exclusive or non-exclusive arrangement while earning royalties. For instance Makate after putting his idea into writing, he sought the advice of his mentor and superior on how he could sell it to any of the cell phone service providers, including Vodacom. But then, what went wrong?
Intellectual property encourages innovation while developing the economy of a country. It high time African countries, its governments and relevant stakeholders work together to access the role, importance and interplay with other sectors which must be exploited and commercialized.
Rep your country by leaving a comment in the comment section if you ever sent the Please Call Me text and the network service provider that made it possible.
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To find out more about the issues raised in this case including patents, remedies available to an IP owner, alternative dispute resolution, authorship, check out the Twitter version podcast version on Anchor, Spotify, Google and Apple podcast, Breaker. You can contact me by sending an email to ipseriesinfo@gmail.com