A growing and prosperous territory

Successful centenarians know a thing or two about growing up in the world. It’s tough, it’s competitive, and it involves looking after friends in an ever-changing environment. Adams & Adams celebrated its Centenary in 2008.

Core values have changed little since the firm’s creation in 1908, with a commitment to transformation in the workplace to better represent the demographics of South Africa, with maintaining service excellence being at the  heart of the firm’s vision for the future.

New projects to celebrate 100 years included increasing intellectual property awareness through a sponsored programme on Summit TV.

Publicity
The project was important both in terms of marketing and feedback from the programme. Summit is a local business channel aimed at high-level decision makers in the South African business world. Sky News also crosses to Summit TV on a daily basis. It was an ideal medium to publicise achievement across the firm and the positive feedback ensured the project’s success.

Several clients have ordered full sets of all the programmes from the channel for their internal use.

Adams & Adams is represented, directly and indirectly, in virtually every country in the world – making it one of the best-known intellectual property law firms. The key to success is maintaining good client relationships, which were established early on in the firm’s history by its founders, Harry and Eustace Adams.

New office
With offices in Pretoria, Johannesburg, Cape Town and Durban, the client base is vast. The firm represents local and international clients in more than 50 African countries.  The latest addition to the practice is an office in Maputo, Mozambique. Future plans are significant. The firm is actively investigating opportunities for new offices, especially in Africa.

Dario Tanziani says: “We are an international law firm with a predominantly IP practice, based in Africa. As interest in Africa gains renewed momentum, it makes sense for us to be looking to carry our well-established global brand into Africa, given our long years of experience and expertise in providing services to our clients on our continent.”

Remaining active across the African continent for 100 years is something of an achievement for any law firm.

New associates
As with any large organisation, a foundation for growth is in the establishing of new associates. In the past two or three years Adams & Adams’ senior team have concentrated much of their efforts into finding the best associates to work with in all African countries. Partners have travelled extensively to every country on the continent in search of the best and most cost-effective services for clients. Once new associates are found, they are then constantly evaluated to maximise their capabilities in Africa.

The legal work itself is sometimes complex and time-sensitive. A South African patent, for instance, does not extend to any other country. Because the country is a member of the Patent Cooperation Treaty (PCT), foreign clients who wish to obtain patent protection in South Africa should bear this in mind when extending their PCT International Phase filings to National Phase. They have up to 34 months from the earliest priority date to do so in South Africa at relatively low cost. An average PCT National Phase filing in South Africa costs between $1,000 and $1,300 from filing to grant.

Patent department
The firm’s patent department renders a full range of legal services in technical fields such as biotechnology, chemical engineering, chemistry and pharmaceuticals, electrical and electronic engineering, mechanical engineering, plastics and polymer technology, computer technology and civil engineering.

Services include everything from preparing patent specifications to filing and prosecuting them to grant in all countries which have a patent system; portfolio management; infringement and validity opinions; amendment advice; litigation; licensing; assignment and advice on exchange control implications thereof; advice on competition law aspects of licensing, enforcement and exploitation of inventions in general; and renewals anywhere in the world.

Due diligence audits and valuations, franchise structuring including finance of start-ups based on IP, as well as Plant Breeders’ rights registrations and enforcement are other specialist client areas.

The firm also has the advantage of having a true Commercial Law section, which can assist patent clients with aspects such as structured finance leveraged off their patent portfolio, start-up of companies, shareholders’ agreements tax advice and the like.

Although clients seek expert guidance, there are basic do’s and don’ts that the client must observe in order to file a successful patent application. The most obvious consideration is a common∞sense approach to confidentiality.

Secrecy
Dario Tanziani of Adams & Adams explained: “Clients should first of all bear in mind that South Africa has absolute novelty requirements, in other words disclosure of the invention anywhere in the world, by written or oral description, by use or in any other way, will destroy the novelty of the invention and render it unpatentable.

“So secrecy before filing is of paramount importance.”

To prepare and file a patent application, a client should provide a description of the invention, indicate how it differs from the state of the art in the relevant field, and drawings if appropriate and possible. The firm will take it from there and guide the client in personal consultation until it has prepared a patent specification, which is of the highest professional standard and properly protects the client’s invention, and file it at the South African or other relevant Patent Offices.
 
This service can also be offered to foreign clients and associates who may need to outsource their drafting due to capacity constraints. Another issue regarding client input is remaining aware of when a patent becomes lapsed.

Warning systems
Warning systems can be put in place to alert clients of imminent due dates for payment of renewal fees. A South African-granted patent will lapse if the prescribed renewal fee is not paid on the relevant anniversary date (PCT International filing date for PCT National Phase cases, local filing date for Convention or locally originating cases).

There is a six-month grace period during which a renewal fee can still be paid with payment of extension fines. Adams & Adams has a fully automated system in place, which sends out computer generated reminders to clients six months, and then again two months, in advance of the renewal due date, as well as two months into the grace period.

The firm will also send a reminder to the person responsible for the case to phone the client if it seems that the non payment is unusual and may have resulted from administrative problems on the client’s side.

Do mistakes ever happen?
If the Registrar can be satisfied on affidavit evidence that the lapsing was unintentional and that the application for restoration has been made without undue delay, then he will advertise the application for restoration in the Patent Journal for opposition purposes. There is a two-month opposition period during which anyone can oppose the restoration on proper grounds. If there is no opposition, then the Registrar will issue a notification calling for the outstanding renewal fees to be paid, and will then issue a Restoration Order.

Trade marks
Trade marks are another service area in which the firm specialise.The Trade Mark Department has a presence in the firm’s Pretoria, Durban and Cape Town offices. It currently has a professional staff complement of 25 partners, nine associates, six professional assistants, 13 candidate attorneys and 14 paralegals. The partners, associates and professionals are all qualified attorneys and most of them are also qualified trade mark practitioners.

Legal amendments can affect the type of trademarks that can be applied for in South Africa and the team remains alert to all industry changes.

There have been no recent amendments passed which affect the types of trademarks that can be applied for in South Africa, although there is an IP Laws Amendment Bill under discussion which would allow for ‘traditional terms or expressions’ to be registered, if passed in its present form.

‘Traditional term or expression’ means a term or expression which is recognised by an indigenous community as a term or expression having an indigenous origin and a traditional character and which is used to designate, describe or refer to goods or services. These could, in terms of the Bill, be capable of constituting a certification trade mark or a collective trade mark and a geographical indication.

Trademark prosecutions and enforcement help define the firm’s level of success and the benefits of using a top firm.

Success
In the year up to September 2008, Adams & Adams has filed 5,600 trademark applications. The Registry has issued 5,447 Office Actions in respect its clients’ applications so far. The firm’s success rate in responding to these is close to 99 percent. But a good a good legal firm, like any organisation, is not just about business know-how and knowledge, it’s about people. Training is at the heart of Adams & Adams and the services it provides to the client base of more than 15,000 people. In-house lecture programmes give all staff the opportunity to improve and update their legal knowledge and skills. Support staff too are encouraged to undertake studies wherever appropriate to improve their skills base and enhance their career prospects.

“Senior support staff serve as mentors to junior, less experienced support staff. Several support staff have made it through the ranks to managerial, paralegal and professional level,” said Dario Tanziani.
 
“We also sponsor a secretarial school for individuals from previously disadvantaged backgrounds and we draw from the graduates for our own staff or find alternative employment for them where appropriate.”

Growth
From a law practice with two partners, the staff complement has grown to 55 partners, 13 senior associates, 14 professional assistants, two full-time attorney-consultants, 40 candidate attorneys and 32 paralegals. Traditional standards of high ethics and professionalism have facilitated growth, but new technology is enhancing service delivery.

Two well-known software products have been customised and integrated over a period of more than one year. The result is believed to be a highly advanced IP and legal case management and electronic workspace system which will enable greater flexibility in working hours through remote access to electronic files.

“This will in turn enable faster turnaround times and more detailed record keeping, both of which will be to the benefit of our clients,” says Dario Tanziani. “These capabilities were but a pipe dream 20 years ago.”

There is more to come too. Through upskilling and lateral hire of talented lawyers, Adams & Adams is increasing its capabilities in the pharmaceuticals regulatory and competition law areas. As with any expansion, the risk associated with facilitating growth are evident, but after 100 years of success and growth the firm is not anticipating maintaining the status quo.

“We are facing significant challenges in these endeavours, not the least of which is the skills shortage being experienced in South Africa and abroad,” says Dario Tanziani.

“We are nevertheless confident that the strength of our brand, our commitment to service excellence and progressive outlook will attract young talent of the highest calibre and diverse backgrounds to both our support staff and our junior and senior professional ranks.”