patents

A patent is a monopoly right granted to an inventor by the state for a limited period. This monopoly allows the inventor to prevent any other person from exploiting the invention without the inventor’s permission. In return, the inventor must fully disclose the invention to the public so that, after the patent has expired, anyone with the requisite skills can exploit the invention and perform it simply by reading the patent specification. The inventor can assign the invention to anyone else who then acquires all rights to the invention.

Infringement of a patent is not a crime so that the State does not enforce patent rights. Instead, the patentee may institute infringement proceedings against the infringer in the appropriate court and seek compensation.

The full disclosure of the invention is made in a patent specification and the staking of the monopoly claimed is made in the written claims which form part of the specification. The patent specification is therefore the equivalent of a title deed and must be properly drafted. This is why the advice and assistance of a patent attorney are usually necessary.

Similar to other forms of intellectual property, a patent constitutes an asset. As an asset, it may be sold (by way of assignment), or licensed, which is analogous to being rented.

what is patentable?

Any invention, whether an apparatus, article, device, method or process, is patentable if it fulfils the three requirements discussed below.

The word “invention” relates to the way in which an apparatus, article or method operates rather than to its appearance or exact physical form. A patent, therefore, protects a principle of operation or construction.

An idea, as such, is not patentable, but it can often be applied to an invention which is patentable.

requirements for patentability

excluded subject matter

The Patents Act provides that the following are not patentable:

• aesthetic creations, e.g. fashion designs, motor vehicle designs, etc;
• business methods, e.g. credit or stock control;
• computer programs;
• discoveries;
• literary, dramatic or musical works;
• mathematical methods, e.g. new equation solving methods;
• presentation of information;
• rules for playing games (the games equipment may be patentable);
• schemes of doing business, e.g. investment or insurance schemes; and
• scientific theories, e.g. Einstein's theory of relativity.

Inventions are only excluded from patentability to the extent to which a patent or application relates to an excluded category. Thus, an invention, which relates only in part to one of the excluded items, may be patentable and professional advice should be sought.

Certain other inventions are also excluded. These include any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product for such a process and a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body.

However, a substance or a composition for use in such a method of treatment or diagnosis is patentable even if the substance or composition itself is known, provided its use in the method of treatment is new.

novelty

The invention must be new at the time of applying for the patent. This means that it must not have been made available to the public, anywhere in the world, in any way.

An invention may become publicly available in many ways, such as orally, by using the invention, describing it in any printed publication or over the internet, or in any other way.

The Patents Act also provides that an invention used secretly and on a commercial scale is considered to destroy novelty. This means that if a secret recipe is being used to prepare a composition which is being sold to the public, the invention is not considered new for purposes of patentability.
 
This type of novelty which exists in South Africa is known as absolute novelty and exists in several other jurisdictions.

It is accordingly essential that, before an application for a patent is made, the invention be kept secret, or at least, only disclosed to others in confidence. Disclosure made on a confidential basis does not destroy the novelty of an invention but one should be careful in making the confidential nature of that disclosure explicitly clear to the disclosee.

Disclosure of an invention as a result of the working of the invention in South Africa by way of reasonable technical trial or experiment does not destroy novelty. Unauthorised disclosure may also be excused, provided that the applicant applies for protection with all reasonable diligence after learning of the disclosure.

However, even if the inventor keeps the invention secret, it is difficult to assess novelty as it is sometimes impossible to establish whether others have made it publicly available.

Novelty in such instances may be assessed by carrying out searches through existing printed publications. These publications include previously published patent specifications. Patent searches are dealt with further below under a separate heading.

However, because of the time and cost involved in conducting searches, it is often preferable to file a South African patent application immediately. This enables the invention to be technically or practically tested, and market research to be carried out, before incurring the costs of searches, whilst reserving the filing date of the patent application.

However, it is highly desirable to have a search carried out in instances where patents in foreign countries are required. This is so because foreign patent applications are costly and the possibility of obtaining strong patents should be properly assessed. Foreign patent applications are dealt with further below.

utility

The invention must be useful. The Patents Act requires that, for an invention to be patentable, it must be capable of being applied in trade or industry.

inventiveness

The invention must be inventive, that is, the product of a certain level of ingenuity. The expressions "obvious" or "lack of inventive step" are used to indicate that this requirement is not fulfilled, having regard (with certain exceptions) to any matter, which forms part of the state of the art immediately before the priority date of the invention.

Although it is not possible to provide a definitive test for determining whether an invention is obvious, this requirement should be borne in mind, especially where an invention involves a minor departure from that which is already known.

who may apply for a patent?

Only the inventor has the right to apply for a patent. This right may be assigned to another person who then steps into the inventor’s shoes. Thus, the applicant for a patent may be the inventor, another person, a company, a closed corporation or trust. It may also be more than one person, as a share of the invention of may be assigned.

There may be more than one inventor in respect of a single invention and there may be joint owners of a patent application or patent.

If an inventor is employed by another to create a new product or invent something new, it is usually an implied or specified term of employment that inventions be assigned to the employer. However, irrespective of the terms of an employment contract, an employer has no rights to invention which was not made within the scope and course of the inventor's employment.

patent infringement

In terms of Section 45(1) of the Patents Act, the effect of a patent “shall be to grant to the patentee in the Republic the right to exclude other persons from making, using, exercising, disposing of or offering to dispose of, or importing the invention so that he shall have and enjoy the whole profit and advantage accruing by reason of the invention”.

According to Section 65 of the Patents Act, an infringement action may be instituted in the Court of the Commissioner of Patents by the patentee (or joint patentee) against any person who, without the permission of the patentee, performs any of the above mentioned acts. The patentee is the person whose name is entered in the patent office register as the name of the grantee or proprietor of a patent.

No proceedings for infringement of a patent may be instituted within a period of nine months from the date of grant of the patent:  provided that on good cause shown the Commissioner of Patents may grant leave to institute such proceedings at any time.

The action is commenced by the issue of a combined Summons supported by a Power of Attorney followed by a pleading period. After the close of pleadings there are certain interlocutory proceedings before the matter is brought to trial before the Commissioner of Patents at which oral evidence is given by witnesses who are subject to examination, cross-examination and re-examination. Relief, to which a successful plaintiff is entitled, includes: an interdict; an order for delivery up or destruction of infringing products or articles; and damages for infringement.

patent revocation

In terms of section 61(1) "any person" may apply for the revocation of a patent and an application for revocation may be made at "any time". It is implied that such an application would follow only after a patent has been granted for an invention. Preferably, a letter of demand will be sent to the patentee to surrender the patent before an application for revocation is lodged. An application for revocation may be made on any of a number of grounds listed in Section 61 of the Patents Act, some of which include a lack of novelty, lack of inventive step, inutility of the invention described in the specification, insufficient disclosure of the invention in the specification, or lack of clarity or fair basis in the claims.

The onus in revocation proceedings is on the applicant for revocation to establish his objections on a balance of probabilities.

Revocation procedure is set out in Patent Regulations 89 to 94. An application for revocation is entered on Form P.20 and must specify the grounds on which the applicant intends to apply for the revocation of the patent. The application for revocation must be accompanied by a statement of particulars of the grounds on which the application is based and must be served on the patentee at its address for service. The application is followed by affidavit evidence of the involved parties before the matter is heard by the Commissioner of Patents. The commissioner shall decide whether the patent in issue shall be revoked or whether the patent shall be upheld.