What is not patentable?
- Mathematical methods and Scientific Theory
- Discovery
- Work protected already by Copyright
- Business Methods or Games
- Software
- The presentation of information
- Methods of treatment practiced on the human or animal body
- A variety of animal or plant (non-GM)
An invention incorporating one or more of these items as mere features of the invention may still be patentable.
It is important to first discern between a discovery and an invention:
- Gold was discovered, but to purify the gold from the ore was an invention
- Penicillin was discovered, but the application as an antibiotic medicine to cure bacterial infections was an invention
These points are important when Traditional Knowledge or Indigenous Law is applied.
Novelty
- State of the Art and Priority Date
The most important prerequisite for the patentability of an invention is that it must be new as defined in the Patent Act. An invention is deemed to be new if it does not form part of the state of the art immediately before the priority date of the invention. The state of the art comprises all matter (whether a product, a process, information about either, or anything else) which has been made available to the public (whether in the Republic or elsewhere) by written or oral description, by use or in any other way. The state of the art for purposes of determining novelty also comprises matter contained in a pending patent application in South Africa where such matter has an earlier priority date. An invention used secretly but on a commercial scale within the Republic will also form part of the state of the art for the purposes of determining novelty. - Publication prior to Patenting destroys novelty
The inventor and/or applicant should ensure that the invention is kept secret until such time as a patent application for the invention has been filed. If, before a patent application is filed, it is necessary to disclose details of the invention to other persons, e.g. For the purpose of preparing drawings or to obtain technical assistance, or for commercial interest in order to obtain financial assistance, such disclosure should be made under a pledge of secrecy which should preferably be in writing. A non-confidential disclosure of the invention before the patent application is filed may destroy the novelty of the invention and can rule out any hope of obtaining valid patent protection for the invention. - Innovation disclosed in any country can destroy novelty
Inventive Step
Another important prerequisite for patentability is that the invention must involve an inventive step and thus merit patent protection. This involves an enquiry into whether or not the invention is obvious. An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to matter which, immediately before the priority date of the invention, forms part of the state of the art. The relevant state of the art for assessing inventiveness is somewhat narrower in scope than that used for assessing novelty: the subject matter of an earlier pending patent application and prior secret use of an invention do not form part of the state of the art when obviousness is assessed.
Applicable in Trade, Industry or Agriculture
The last prerequisite for patentability is that of applicability in trade, industry, or agriculture. Broadly speaking, this means that the invention must be capable of being used for a commercial purpose in at least one branch of science and technology.
- Inventor can assign his rights to Company and/or Organisation i.e. Prof X from Microbiology is inventor, but Stellenbosch University is Patent Holder
- Jointly owned inventions are shared equally between inventors
An application for a patent may be made by the inventor or by any other person acquiring from the inventor the right to apply, as discussed above, or by both such inventor and such other person. Thus a patent application may be filed in the name of an assignee (e.g. a natural person or a company), who has obtained a written assignment of the invention from the inventor.
Application for a patent
There are two ways in which a first application for a patent may be filed by a local applicant, namely either:
- As a provisional patent application, accompanied by a provisional specification fairly describing the invention. A complete patent application has to be filed within 12 months from the provisional application (which means that the provisional application must be completed within 12 months), or within 15 months on payment of an extension fee.
- Or as a complete patent application in the first instance, accompanied by a complete specification fully describing the invention and the manner in which it is to be performed together with illustrative drawings and claims defining the subject matter for which protection is claimed.
If a provisional application is not followed by the filing of a complete application within 12 months, it lapses. An extension of three months may be obtained for filing the complete application.
However, the filing of a provisional patent application has substantial advantages over the filing of a complete patent application in the first instance:
- A provisional patent application can usually be filed with the minimum of delay, since, amongst other reasons, the inclusion of claims is not required in a provisional specification.
- The filing of a provisional patent application secures a priority date, both nationally and internationally, in terms of the Paris Convention.
- A provisional patent application affords an opportunity for the novelty, technical merit, and commercial prospects of the invention to be investigated before further patenting costs are incurred.
- Developments and improvements which occur after the filing of the provisional patent application can be either included in the complete patent application filed 12 months after the provisional patent application, or they can be in a later application.
The filing of a complete patent application in the first instance, instead of a provisional patent application, is only advisable if the applicant is completely satisfied that the invention has been perfected and that further improvements or modifications thereof are unlikely. The addition of the details of further modifications to a complete patent application is not permitted. In a complete specification, the invention and the manner in which it is to be put into practice must be fully described. A complete application in the first instance is filed without a claim to priority, and its effective date is the date of lodging the application.
It is advisable for the applicant to have searches conducted. A search is valuable when assessing the patentability of an invention (a novelty search), and/or when assessing whether the exercising of an invention potentially infringes the patent rights of another (an infringement search). A novelty search is therefore to ascertain the extent to which the invention is novel, and thus patentable. Such searches should be done before filing patent applications abroad on an extensive scale. An infringement search is therefore to ascertain whether or not exploitation of the invention potentially infringes a prior patent in South Africa in the name of another person. An infringement search is advisable before heavy capital costs are incurred in commencing exploitation of an invention.
The term of a patent is 20 years dating from the date of filing the complete application subject to the patent being maintained in force by the payment of the prescribed renewal fees. In order to maintain the patent in force, it is necessary for annual renewal fees to be paid, commencing at the end of the third year after the filing of the complete application, and which must be paid in advance. Failure to pay renewal fees timeously results in the lapsing of the patent.
A patent granted in this country affords rights in South Africa only, which patent rights do not extend to any neighboring countries, nor any other country in the world. If patent protection for the invention is required in any country outside the South Africa, separate patent protection must be obtained in each country. This is normally achieved by the filing of a separate patent application in each country or by the filing of a regional or an international PCT (Patent Cooperation Treaty) patent application. These foreign patent applications will need to be filed within a year of the priority date claimed and the priority benefits of the Paris Convention can be claimed in appropriate cases. An international PCT application will also need to be filed within a year of the priority date claimed. However, a PCT application will not result in the grant of an “international patent” as such a patent does not exist. In due course, an applicant will need to prosecute this international application in each country or region in which he desires patent protection by way of filing separate national patent applications in each of these countries. The PCT simply facilitates this process by providing for the initial filing of one patent application instead of the immediate filing of separate national patent applications at the outset. A search report listing relevant documents in the field is issued to the applicant in due course, after which the applicant has the option of requesting examination of the claims of the PCT application.
South Africa has been a member of the PCT since 1999
Estimated costs of filing and prosecution of a provisional patent application followed by a PCT application:
The drafting and filing of a provisional patent application: ± R 9 000
The drafting and filing of a PCT application (within 12 months of the filing date of provisional patent application): ± R 0 000 - R 60 000
Considering the PCT Search Report and (optionally) requesting examination of the claims (within 16 months of the filing date of provisional patent application): ± R 15 000
The filing of PCT national phase applications (within 30 months of the filing date of provisional patent application): ± R 50 000/country
South African Patent Act No. 57 of 1978 | Plant Breeder’s Right Act No. 15 of 1976
What is not patentable?
- Applications: Uses of a micro-organism, applications of a biological molecule; compositions, combinations
- A variety of animal or plant (non-GM)
- Any essentially biological process for the production of animals or plants, not being a micro-biological process
- A method of treatment practiced on the human or animal body
1Budapest Treaty 1977
What is patentable?
- Non-living entities
DNA, recombinant DNA, RNA, promoters, plasmids, vectors, peptides, proteins, antibodies - Living entities
GMO organisms, plant and animal cultures - A discovery
- Methods: Assays; method of manufacture
Software
- Code is not patentable (but is protected by Copyright)
- Algorithm is not patentable. Apparatus or a method that is not directed to a computer program or a media containing a computer program per se is patentable.
Acknowledgements:
WIPO (World Intellectual Property Organisation)
Intellectual Property and Biotechnology: A Training Handbook
Adams & Adams Patent Attorneys
Gerard Verhoef
