Summit TV speaks to inventor Ryk Eksteen and Don MacRobert from Adams & Adams Attorneys about inventions and how to develop and protect one’s intellectual property.

Transcript

Summit TV speaks to inventor Ryk Eksteen and Don MacRobert from Adams & Adams Attorneys about inventions and how to develop and protect one’s intellectual property.

Stephan Lamprecht: Welcome to the Intellectual Property Show. You’ve invented a new gadget and believe that it will sell like hot cakes on one of the many home shopping channels - but what about protecting the design, or registering a catchy name for your product? With me tonight is Ryk Eksteen an acclaimed inventor, as well as Don MacRobert from Adams & Adams Attorneys. Ryk, to start off with you’ve received several design awards and recognitions for your inventions - tell us a little bit about that…

Ryk Eksteen: I entered the SABS awards - they have two awards, a prototype award and design award - and I entered both and received awards from them, and then the Technology Top 100 competition…

Stephan Lamprecht: What did you receive the awards for - what was the invention that you came up with?

Ryk Eksteen: The invention is a new exercise apparatus for a sports-specific market. I invented the apparatus called the D-Sebecs - that’s an apparatus to activate your core muscles and the bigger muscle groups simultaneously.

Stephan Lamprecht: Don, the typical problem that you have when you come up with these kinds of inventions is that once you bring it into the market then a lot of the novelty is destroyed because it might be obvious how the thing works - from an intellectual property point of view how would you go about safeguarding yourself from that kind of situation?

Don MacRobert: May I start off by congratulating Ryk on his invention - I wish him every success to do well and make money. We will get to your question shortly - but let’s hope that many South African sports people will use his apparatus to improve our overall international competitiveness in sport. To answer your question there are different ways of protecting the invention that Ryk has described to us briefly - number one you can get a patent. A patent is granted for everything that’s new - in terms of the Patent Act it says that to be new it must not have been known, used or described such as in any magazine, trade journal or patent specification anywhere in the world. So on the patent side if Ryk where to start using his own invention before he applied to register his patent he could destroy his own novelty. The second aspect of law is design protection - if his particular apparatus has a particular appeal to the eye one could register it as a design in terms of the Designs Act...

Stephan Lamprecht: That would relate I would imagine not only to just the aesthetic appeal - maybe there is some functional reason the design needs to operate the way it does, or look the way it does?

Don MacRobert: You are absolutely correct. Design protection can cover the aesthetic or the functional - it could cover both. In the case of Ryk with his exercise machine if it has a particular shape to it then he may be able to register it probably for the functional side because of what does for sportspeople, but it may also have aesthetic appeal. Then let us consider for example the cellular telephone as bigger than the cellular telephone - it has a name which is a trademark. You mentioned the name of your invention…

Ryk Eksteen: D-Sebecs.

Don MacRobert: D-Sebecs is your trademark - that is the name. People walk into the shop and say I want a D-Sebecs or I want lots of D-Sebecs to support Ryk. That’s the name that must be protected as well. That is the third form of protection. The shape may appeal to the eye which is the point you mentioned earlier - the aesthetic - or it could be a functional thing if you pull it open or for example. The most recent iPod is the telephone iPod - there are so many different aspects of intellectual property tied to it. It has a patent as I described, it has design - and there’s the name iPod or whatever the case may be. So it covers all three. But I wish to repeat to any inventor like Ryk or anyone out there - please do not start developing your product or commercially exploiting it until you have taken the necessary advice and particularly applied to register your patent or design.

Stephan Lamprecht: That’s very complex. Ryk, from your point of view what has been your learning experience in regards to intellectual property?

Ryk Eksteen: It’s a very difficult concept in the sense that it’s going to cost a lot of money to actually patent the product - and you’re not always sure with the new idea that you have if it’s going to go somewhere. What I’ve done is I’ve looked at an idea - they say ideas become thoughts, and thoughts become things - so I tried to think of the final customer or the final consumer that’s going to buy it. It’s not always necessarily the final product that you need to think of - but the final consumer, if they’re going to buy the product or not. So you have to have balance between the idea and final product. Then your idea is going to go through the developmental phases - every developmental phase or prototype phase - and then I took it to the final consumer, a group of about 20 people. At every developmental phase I asked questions about what worked what didn’t - and from there I went further to develop the product until the final stage.

Stephan Lamprecht: So you started off taking out provisional registration for some of the aspects in order to safeguard the initial idea, and then you started developing and improving it…

Ryk Eksteen: Yes, that’s what I’ve done.

Stephan Lamprecht: That is both for South Africa and overseas?

Ryk Eksteen: Both South Africa and overseas. I started off with a temporary patent - which gives you about a 12-month window period where you can experiment with the product and test the market - and from there you can go to a final patent filing or PCT patent filing.

Stephan Lamprecht: All of this you did by yourself?

Ryk Eksteen: By myself.

Stephan Lamprecht: Are there organisations that supported you and gave you advice?

Ryk Eksteen: I made use of the SABS Design Award as we spoke about earlier and also the Technology Top 100 award. That also gives you scope to meet other inventors to get your product out there to exchange ideas and experiences.

Stephan Lamprecht: Well done. Don from your point of view you’ve dealt with many inventors over the years - you’ve seen things come and go, you’ve seen mistakes made, you’ve seen also huge successes - from your point of view how can you be pro-active? What is the most important thing that an inventor needs to do when they start off with on that journey from idea right through to product phase?

Don MacRobert: The first thing is the idea, then the prototype - make sure you have a working model of something like his exercise machine. There I would not start disclosing it yet or having workshops until as I think Ryk correctly has taken steps to protect it by the patent process which he has done - to get his patent both here and overseas in America. He referred to the Patent Co-operation Treaty (PCT) so he’s obviously done is homework. He is quite smart - he is a streetwise gentleman. The first thing therefore is get your prototype, the second is get your protection on file - the third is to get your name protected at the Trademarks Office. Perhaps the most important is to make sure that with exploitation you bring in a commercial partner to help you along the way either to make it under licence - and they pay you a royalty, or pay you in some other way - and then to export or market it if that would help. I say if it would help because quite frequently - and this is the said part about it - many inventors become very disenchanted with the patent system or the intellectual property system because they blame either the system or the law or the patent office or the patent agents because their invention that’s fantastic never produces the ultimate financial reward. Therefore I suggest consult and maybe get a commercial partner - and there are people who look for commercial aspects like this.

Stephan Lamprecht: You can’t do everything yourself...

Don MacRobert: I would suggest not. I’m going to break away from your interview now - and you may can it or not - there are organisations who look for people just like Ryk, for example the Remgro organisation and Johann Rupert started VenFin to look for inventions and the emerging Ryk’s because they believe South Africa is awash with entrepreneurs.

Stephan Lamprecht: The important point that you’re making is you don’t have to do everything by yourself - there are people that are looking for ideas, looking for people like Ryk with an inventive side to support them.