1. What is a patent?

A patent is a monopolistic right granted by the state to an inventor and which confers upon the patentee the right to exclude other persons from selling, making, using or commercially exploiting the invention as he feels fit. This protection lasts for only 20 years provided that all formalities are complied with. (See the Patents Act No 57 of 1978).

2. Which ideas can be patented?

Any product, process, method, device or a combination thereof or an improvement of any of the alternatives can be patented. A good patent agent will leave no stone unturned to describe the invention as any of the above-mentioned alternatives or a combination thereof, knowing that the wider the description the better it is protected. There is no fixed list of patentable ideas; however there are some inventions that are excluded from patentability such as medical methods of treatment, biological processes for the production of animals, or discoveries. (A discovery is not patentable since as a natural phenomenon it has not been created by the inventive mind of an individual - it has always been there, as opposed to an invention, which is a new and novel creation).

A mathematical formula can also not be patented since it represents a natural phenomenon. Computer programmes are normally protected by copyright. However, it is possible to patent certain aspects of computer programmes, such as algorithms or a process in the programme. Because this field is very specialised and highly competitive, it is advisable to consult a patent agent and not to rely on copyright protection alone for software programmes. The possible patenting of software is further discussed in FAQ 12.

3. What are the legal requirements?

There are three legal requirements for patenting an idea:

Novelty: An idea must be new. If it has been publically known or described in printed material before the application date, the idea cannot be patented. A discovery is not a new idea because as a natural phenomenon it was there all the time. Secret application of an idea also disqualifies it from being patented.

Nonobvious: The test for this requirement is as follows: if an expert skilled in the art and who is familiar with the 'current state of the art' related to the idea, and who, when confronted with the same problem, comes to the same solution and conclusion as the idea, then the idea is not patentable. Therefore a invention is deemed to involve an inventive step.

Utility: An invention must find application in industry, agriculture or commerce - it must add value and benefit society in some or other way. However, it is not a prerequisite that the invention must be a commercial success in order to fulfill this requirement.

An idea that complies to these requirements can be considered an invention and is patentable.

4. How do I conduct a patent search?

Before embarking on the process of patenting your idea, you should conduct a patent search to ensure that the same idea has not been patented before by somebody else. South African law requires no novelty search to be conducted before any patent is granted and therefore the Patent Office grants patents to all formally correct applications. The onus rests on any person who believes that he is the original inventor of an idea that was previously patented by somebody else, to prove this in court. This is opposed to the international situation in which the inventor must prove that the idea is novel by conducting a compulsory and extensive novelty search before any patent will be granted by such a patenting office.

This is an expensive exercise, but with the advantage of keeping your priority date given by the office where the provisional patent was filed, should the search be in your favour. Since a prior professional search is still recommended for South African patent applications, it is possible and advisable to do a preliminary search yourself on free search engines available on the internet before any patent agent is consulted. The South African Patent Office has no such facilities and South African searches must be done manually.

USA: |

5. Is my idea worth patenting?

"Anything that won't sell, I dont want to invent" - Thomas Edison 

It is necessary to consider market trends before a small fortune is spend to patent an invention. Find answers to these questions regarding your idea or product: Does it solve a problem? Is there a market for it and how large is the demand? What is the growth potential? Can it be manufactured competitively? What competitive products are there on the market? Will the market still be there after the incubation period? How long will it take to put the product on the market? How will the product be marketed and sold? To address these questions requires a professional approach and the following steps are proposed: Firstly it must be determined whether the invention solves some problems to a certain technical standard.

6. How do I register a patent?

In the case of a provisional patent any person can undertake its registration in South Africa. (The registration of a final patent must, however, be done through a registered patent agent). A priority date will be given by the:

Office of Patents and Trade Marks
Private Bag X400
Pretoria 0001
Tel: (012) 310 9791

to an applicant who's application is formally correct, at a fee of R60. This priority date is valid in all countries for one year. thanks to the Paris Treaty on Industrial Property signed in 1883. The applicant must decide to proceed with his application within that year and must simultaneously indicate in which other countries he intends the patent protection to be applied for. For the final stage of registration the use of an patent agent is compulsory. However, this is to your advantage because they endeavour to describe the invention in a water tight manner and see to it that the application is formally and technically correct.

For the international registration of patents, Stellenbosch University prefers to take the PCT Route to formalise the process because of the extended time limits. The international protection of patents is very expensive due to the fact that in such cases (a) patent novelty searches are compulsory and (b) the applications have to be translated into the specific country's official language. The patenting process for inventions made by staff and students at Stellenbosch University in the normal course of their work or studies, is initiated by completing an invention disclosure form.

7. The patenting proccess at Stellenbosch University

The following steps are prescribed by Stellenbosch University for staff and student who have developed a patentable idea in the normal course of their work or study at the university. The Univeristy believes that by following these steps the rights and interests of its staff, students, and that of the University, are protected at best. The necessary forms are available from the OIP. It is required of staff and students to disclose inventions according to their employment or study contract with the University.

1. Log-book
Written records of ideas should be kept by all researchers within their departments by means of a laboratory log-book.

2. Disclosure
Do a preliminary patent novelty search to put your mind at ease about the novelty of the idea. Complete the disclosure form and remember to get the signature of your dean or departmental chairperson. Deliver the form by hand in a sealed envelope to the Senior Director, Division for Research Development in Adm. B, Victoria Street, Stellenbosch. Do not publish or disclose your idea to any other third party at this stage. The University bounds everybody involved in the disclosure form to the confidentiality agreement in the form. 2. 

3. Research Development and OIP
The Division for Research Development, in consultation with OIP, do a preliminary assessment of the idea and both offices undertake to give feedback within days. The assessment will include a preliminary economical evaluation of the idea as well as a preliminary novelty search.

4. Patent Committee
The Patent Committee will evaluate the submission and will decide whether the University will continue with provisional patenting of the idea on the grounds of the assesment that was done in the previous step.

5. Feedback
OIP must give feedback on the status of the disclosed idea within four weeks, unless otherwise agreed upon. This feedback will include an indication as to whether the University will proceed with the provisional patenting process. Prima facie unpatentable ideas will also be handed back at this stage, with the shortcomings being spelt out to give the inventor the opportunity to re-submit the idea. Renouncement of the intellectual property ownership by the University will only happen at a later stage, should the University elect not to exploit the idea itself.

6. Sophistication by OIP
Approved disclosed ideas are sophisticated by the OIP in close co-operation with the inventor, and strategies are developed to exploit the invention. This step also involves the development of a business plan, market research, financing alternatives and product refinement, but is not limited to this list.

7. Commercialisation
At this advanced stage InnovUS will get involved. Innovus is a private company owned by Stellenbosch University, who manage the business apects of the intellectual property of the University. All action plans that were developed in the previous step will now be implemented on pure business principles.

8. Divison of nett income form the patent
The inventor and his department will benefit financially in accordance with the official IP Policy (section 6).

8. How is my patent commercialised

The following alternatives are available for the commercial exploitation of patents:

The patent rights can be sold outright to an interested party who is in a better position to add value to existing products by utilising the patent, or to use it as a new product as supplement to their existing product line, or to develop a new marketable product. It is very difficult to assess the value of premature ideas and patents without any market history, and such patents are usually sold for a rather low fee.

The patent can be licensed to an interested party, preferably one who specialises in the particular field. It is important to negotiate for the payment of royalties that are based on turnover and not on profits, since companies can manipulate their profits and losses. A performance clause is also advisable, which will enable you to get the technology or patent rights back should the licensee not perform satisfactorily in exploiting the patent.

The patent can be exploited by the inventor himself. This is very complicated because the inventor is usually not skilled in the art of managing a business. It is important to realise that this is a business venture which requires a professional approach towards (a) a business plan, (b) the building of a technology infrastructure around the patent, (c) the addressing and implementing of logistical, management and operational action plans (including the manufacturing and marketing of the product) and (d) the financing of the venture. It is part of OIP's services to asssist employee and student inventors with the exploitation of their inventions in this manner.

Partnerships can be concluded between financiers, developers or companies. A typical structure of such a partnership can be the founding of a company where every partner shares equity pro rate to the amount of value that he contributes or will contribute to such partnership. InnovUS is also dealing with such matters.

Agents can be appointed to market the patent. They often demand a high commision without carrying any substantial risk themselves. Therefore they are not necesseraly the best alternative for exploiting an invention. Beware of agents who demand up-front payments or commissions.

9. What is a PTC (Patent Co-operation Treaty)?

Patent Co-operation Treaty (PCT)

A patent registration in South Africa in only valid within our boundaries. To protect one's IP rights in other countries according to the conventional procedure involves an application to be filed in each of the required countries, each having its own procedures and requirements (for e.g. in the USA a patent is only valid for 17 years and in Europe one must translate the patent description into the official language of the country where the application is filed). South Africa became the hundredth member of the PCT in 1999. The aim of this treaty is to address all the problems that evolved over the years relating to procedures, time frames and cost when registering a patent internationally. The main advantage of using the PCT route to register patents internationally is that only one application for all PCT countries needs to be filed in the same country as where the provisional application was filed. The priority date will then be protected for 20 months (in certain cases up to 30 months) in all the countries which are PCT members, giving the inventor adequate time to do market research and feasibility studies for the countries where patenting is considered. At the expiry date the inventor must then only indicate in which countries he will proceed with the final registration. This extended time frame leads to the effective postponement of translation and legal costs and although these costs can eventually not be avoided, the inventor is placed in a better position to judge and formulate his patenting strategies. This 20 months period in PCT countries is considerably more than the conventional 12 months, and that is the reason why the US policy prescribes following of the PCT route when the international registration of patents is considered.

10. Can software-related inventions be patented?

This question is the subject of many debates because of the high commercial value of software in the industry. The Patent Act is very clear in this regard and section 25(2)(f) states that no computer programme is patentable. However, sec. 25(3) leaves the door open for patenting in very limited cases. This provision has not yet been tested in our courts, and patent attorneys are there led by foreign court decisions when giving advice. In South Africa the problem is avoided because no formal patent search or investigation is required.

For software-related invention(s), if the invention is integral to a particular task or process, it may be considered as patentable. This answer is not adequate and for a better perspective on the problem it is necessary to have a look at USA court decisions where the following guidelines have evolved over recent years:

To be patentable subject matter, software-related inventions must still meet the criteria of being a process, product or device in its own right, as any other invention and therefore it must not just complement a 'to be patented' process. Because of the ambiguous definitions of courts regarding this requirement, the Patent Office of the USA has published the following guidelines to clarify the matter:

  1. "A computer or other programmable apparatus whose actions are directed by a computer programme or other form of software may be considered a "machine."
  2. "A computer-readable memory that can be used to direct a computer to function in a particular manner when used by the computer is presumed to be an "article of manufacture."
  3. "A series of specific operational steps to be performed on, or with the aid, of a computer is deemed a "process." Detailed information on these guidelines are available here.

Courts have also made a clear distinction between broad algorithms and pure mathematical algorithms. The latter implies that the human mind is duplicated ("…claims were not patentable because they really distilled down to a mathematical algorithm representing a mental process that is not applied to physical elements or process steps.") and is therefore not patentable. Mathematical methods are specifically excluded from patentable subject matter in the Patent Act.

Broad algorithms can be defined as "a fixed step-by-step procedure for accomplishing a given result, usually a simplified procedure for solving complex problems", and are patentable. It is left to the courts to decide on this matter.

The distinction must further be made between software and computer programmes. The latter can be considered as a set of statements or instructions to be used directly or indirectly in a computer in order to bring about a certain result. Software, on the other hand, is a broader term which can incorporate computer programmes, libraries, databases, and utilities.

Typical examples from USA case law are as follows: 

Not patentable subject matter. 

"System software"
"Algorithm for typesetting alphanumeric equations"
"Computer programme for the translation of natural languages"

Patentable subject matter. 

"System software"
"Algorithm for typesetting alphanumeric equations"
"Computer program for the translation of natural languages" 

All software programmes also find protection in the Copyright Act as a separate category and it is recommended to include the following note in each such a programme to have at least some kind of protection, should your patent application be rejected: Copyright © (YEAR) Author All rights reserved. where (Year) is the year of first "publication". Further information on this topic is available here.

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