Export of intellectual property assets by South African exchange control residents

A common theme when dealing with transactional intellectual property (IP) matters in South Africa, where one party to a transaction is not a South African resident, is exchange control. The issue of exporting IP assets by South African exchange control residents is a topic that is receiving increasing attention as companies seek to expand beyond our borders. The upcoming Isle of Man Indaba is focused on clarifying the complex issues around the topic. 

Exchange controls are a system of government regulations that limit or regulate the movement of currencies and capital in and out of a country. The logic behind it is that the system is put in place to protect a country’s economy and currency from external pressures and fluctuations.

The concept of exchange control is not unique or new to South Africa. The first iterations of these regulations can be traced to 1930s as part of the war effort to conserve foreign exchange reserves, while apartheid South Africa expanded and tightened controls, which were used as political and economic tools. The controls remain in place to this day.

Where South Africa is somewhat unique from other jurisdictions is that the same regulations that are applied to currency transfers also apply to the movement or exploitation of IP.

The relevant sections of the South African Exchange Control Regulations were promulgated under the Currency and Exchanges Act No. 9 of 1933, and are quoted below for ease of reference:

Regulation 10 (1) provides that: “…No person shall, except with permission granted by the Treasury and in accordance with such conditions as the Treasury may impose – (c) enter into any transaction whereby capital or any right to capital is directly or indirectly exported from the Republic…”

Applying this regulation specifically to IP matters, regulation 10(4) defines the terms “capital” and “exported from the Republic” as follows:

“…’capital’ shall include, without derogating from the generality of that term, any intellectual property right, whether registered or unregistered; and

“exported from the Republic’ shall include, without derogating from the generality of that term, the cession of, the creation of a hypothetic or other form of security over, or the assignment or transfer of any intellectual property right, to or in favour of a person who is not resident in the Republic…”

To confuse matters, the term “intellectual property” is not defined in the regulations and as such it is not always clear to which IP assets the regulations apply. It is beyond doubt that the regulations will apply to the better known statutory IP assets such as trademarks, copyright, patents and the like, but it is less clear whether it should also apply to more abstract forms of IP such as trade secrets, know-how, confidential information, domain names or goodwill (in the form of common law trademarks). 

The definition and application of IP in the regulations has been described as “vague and dangerously open-ended” by the most prominent commentator on the subject, and a conservative interpretation is generally recommended. 

The specific IP assets in play can be very important, as the manner in which IP rights vest (thus, who becomes the first owner of the right) differs between different forms of IP – and in certain cases, this can be a deciding factor on whether the ownership triggers an exchange control event. On this point, it is important to consider the implications of the use of the words “any right to capital” above, as the intention seems to be to capture a wider right than the actual asset being transferred. This has led to some controversy, and the application of this phrase is by no means settled between prominent IP practitioners in South Africa.

As to how the rights are exported, this is also an important consideration. It is relatively uncontested that an assignment (thus, transfer of IP ownership) needs to be regularised but given the wide description in the regulation, the general interpretation is that any rights transfer of IP from a South African exchange control resident to an offshore entity can only take place with the approval of the South African Reserve Bank (SARB). This will include licensing, as well as more unusual IP arrangements such as securitisation, IP settlement agreements or the like. 

The most obvious sanctions in terms of the Exchange Control Regulations regulation 22, which provides that failure to comply with the Exchange Control Regulations may amount to a criminal offence, punishable by a fine of not more than R250 000 and/or five years’ imprisonment. This risk chiefly resides with the South African resident who “exports” the IP.

While criminal sanctions are always very serious, the more practical concern is a commercial one that tends to vest with the acquiring entity. This risk typically materialises downstream when the new IP owner looks to on-sell or otherwise exploit the IP (for instance, by raising capital), which is when a due diligence can uncover the non-compliance. This can also extend to usage within any limitation imposed by the SARB, which can be onerous. In most cases, the risk cannot be priced into the transaction and it can be difficult, or even impossible, to rectify without significant restructuring – which may include reversing the initial IP transfer. 

Getting approval for exporting IP in South Africa involves a process with a commercial bank known as an ‘authorised dealer’. They can approve the export if it meets certain requirements. If it’s more complex, they may refer the decision to the SARB. The general rule is that exporting IP between unrelated parties at a fair price using non-South African funds is likely to be approved. If you want to do something different, you’ll need a good reason, and it’s important to be cautious since the terms are broadly defined in the Currency and Exchanges Manual for Authorised Dealers. For example, “related parties” means parties in a transaction that are connected in some way, like being part of the same group of companies.

It’s important to note that exchange control rules are influenced by various factors including transfer pricing considerations. Clients are usually advised to seek professional help when exporting IP, which often involves experts in commercial IP, IP valuation, tax and structuring.

It should be obvious that exchange control regularisation does not happen in a vacuum and various other factors may come into play, including transfer pricing considerations.

André J. Marè

Commercial IP Attorney and Partner: Von Seidels

Marè heads up the firm’s Commercial and Transactional IP Division. He is the keynote speakers at the Cape Town Isle of Man Indaba.

Companies interested in exploring this topic in more detail are invited to attend the Isle of Man Indaba, taking place from 31 October to 8 November in Durban, Johannesburg, George and Cape Town, at which the topic of “Growing tech and intellectual property companies in order to accumulate wealth in the Isle of Man” will come under the spotlight. The Isle of Man Indaba is a collective of Isle of Man companies with an interest in fostering synergies and bolstering ties between South Africa and the Isle of Man.