Patents

Introduction

Patents in South Africa are governed by the Patents Act (1) (“the Act”).

In terms of the Act, a patent may be granted for any invention which is new, involves an inventive step and is capable of being used or applied in trade, industry or agriculture. A patent protects the underlying principle behind the invention and prevents third parties from making, using, exercising, importing, disposing of (e.g. selling) or offering to dispose of the patented invention.
Generally, inventions have a technical content and could be in the form of new articles or devices, equipment, methods, processes for producing or manufacturing a product, chemical substances and formulations.

Mathematical methods, scientific discoveries, business methods or methods of playing games, computer software and the presentation of information are not patentable inventions. This applies only to the extent that the invention applies to any of the above as such. For example: penicillin, a discovery, would not have been a patentable invention, however the use of penicillin as an antibiotic to cure bacterial infections would have been a patentable invention. Similarly, computer code as such is not patentable, whereas a server configured to perform various functions and interact with various systems or devices could constitute a patentable invention. In addition to this, methods of treatment or diagnosis practiced on the human or animal body as well as animal or plant varieties are not patentable inventions.

Registration

An invention is deemed to be new if it does not form part of the state of the art immediately before the date on which an application for a patent was filed. The state of the art comprises all matter available to the public, anywhere in the world, whether by written or oral description, or by use, sale or any other way. It is therefore imperative that an inventor does not make any public disclosures before filing a patent application. Public disclosures include publishing in journals, presenting at conferences, displaying information about the invention on a website.

In addition to being new, an invention must be inventive. This means that, when all relevant matter in the state of the art is considered, the invention cannot be seen as being obvious to a person skilled in the art if it is to be considered inventive. For example, the invention cannot simply be a combination of known features, but should rather produce a 'synergistic' (or unexpected) effect.

Finally, the invention has to be useful and not frivolous or contrary to any well-established natural laws.

If these criteria are met, an application for a patent may be made by the inventor or by any other person acquiring from the inventor the right to apply, or by both the inventor and such other person. Joint inventors are also allowed to apply. 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. For example, Prof X from Microbiology is the inventor, but Stellenbosch University is assignee/applicant/patentee.

The patent application is usually accompanied by a provisional specification which should fairly describe the invention. A provisional specification provides an inventor with 12 months’ protection worldwide, provided that within that 12 month period either a South African complete or PCT patent application is filed. This effectively provides an inventor with 12 months in which to market the invention, attract investors and/or further develop the invention before having to decide in which counties protection will be necessary.

Term and Effect of a patent

The term of a patent is 20 years provided renewal fees are paid annually.

The term is calculated from the date either on which the South African complete application is filed or on which the PCT patent application is filed.

The effect of a South African patent is to grant to the patentee the right to exclude all other persons, in South Africa, for the duration of the term of the patent, from:

  1. making;
  2. exercising;
  3. using;
  4. disposing of (e.g. selling);
  5. offering to dispose of (e.g. advertising); or
  6. importing

the patented invention.

To obtain the above right in other countries, individual patent applications must be made in each respective country. This is typically done by filing a PCT application within 12 months of the filing date of the provisional application. A PCT application ‘buys’ the applicant an additional 18 months after which individual patent applications must be made in each respective country in which protection is desired.

Practical considerations

Patents can be useful in attracting investors by showing the invention to be worthwhile and can also act as an enabler to entering discussions/investment talks by providing recourse should ideas be stolen as well as clearly defining intellectual property ownership going into the discussions/investment talks.

A patent is a trade-off in that the invention has to be described to a sufficient degree such that it may be performed by anyone else. Given that patent protection expires after 20 years, consideration should be had as to whether or not the invention might better be kept a trade secret. For example, famous recipes are often kept as trade secrets such that, if kept secret, the recipe can be exploited indefinitely.

A patent is a right to exclude. Having a patent does not necessarily give the patentee the right to make, use, import, etc. the patented invention. For example, the making, using, etc. of an invention of a granted patent might actually infringe another granted patent.

South Africa is a patent registration country in that patents are not examined before being granted. This means that while a patent may be granted for an invention, the patent may not be valid for, for example, not meeting novelty or inventiveness requirements.

(1) 57 of 1978