Patents

What is a patent?

A patent is a is a statutory monopoly granted by the Patent Office on behalf of the state which allows the proprietor of the patent to stop others from exploiting the underlying principle of an invention.  In particular, a patent comprises a written patent specification document that sets out the scope of protection being claimed by a patentee with respect to an invention.  In terms of the South African Patents Act No. 57 of 1978, a patent may be granted for any new invention that involves an inventive step and that is capable of being used or applied in trade or industry or agriculture.

What is the process to obtain a South African patent?
The patenting process typically commences with the filing of a provisional patent application, which is particularly advisable if the invention is still relatively conceptual and/or still in its infancy.  Significantly, the provisional patent specification that is filed as part of the provisional application is a secret document, and is thus not open to public inspection (only brief bibliographic details are made available to the public).

The provisional patent application provides the applicant with 12 months in which to develop and improve the invention and thus ultimately to determine the feasibility of continuing with the patenting process.  At the end of the 12 month period, the applicant has a number of options, namely:-

• abandon the provisional application, in which case the provisional application lapses irrevocably;
• file a complete patent application, in order to obtain a granted South African patent down the line; or
• file a PCT patent application, with a view to possibly filing foreign patent applications and a South African national phase application down the line.

Regarding option 1 above, the typical reasons for abandoning a provisional patent application include the non-viability of the invention, or the applicant simply not being in a position to complete the patenting process.  It may be possible to refile the provisional patent application down the line, provided the requirements discussed further below are met.

Regarding option 2 above, in South Africa only, an extension of three months can be obtained on payment of a fee.

With both options 1 and 2, it is not necessary to wait for the full 12 months; it is possible to attend to these subsequent filings at any time within the 12 month period.

As an alternative to filing a provisional application, a complete patent application may be filed right up front.  This is generally only advisable in cases in which the full practical details of the invention have already been developed, so that the 12 month period to develop the invention further would not be required.

However, if for the time being, only require temporary protection is required for the purpose of testing the commercial possibilities of an invention, it is generally still advisable to file a provisional patent application.  Of course, your patent attorney would advise you on the best approach, depending on a particular set of facts and circumstances.

In South Africa, there is no substantive examination of filed patent applications.  Thus, as long as the necessary formalities are in place, an application will be accepted and granted in the form in which it was filed.   The onus therefore remains on the applicant to ensure that its patent application remains in a valid form.

What are the requirements for an invention to be patentable?
In order to be patentable, an invention must be novel, it must involve an inventive step, and it must not be prohibited subject matter.  Each of these requirements will be discussed in more detail further below.

Novelty
An invention is new if it does not form part of the state of the art 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 South Africa or elsewhere) by written or oral description, by use or in any other way.  Thus, as with most other countries around the world, South Africa has an absolute novelty requirement, which means that there should be no disclosure of an invention before a patent application is filed.  However, disclosure made on a confidential basis does not destroy an invention’s novelty, but such a disclosure must be done with caution.

An invention used secretly and on a commercial scale in South Africa also forms part of the state of the art, and may thus also destroy an invention’s novelty.

Finally, the disclosure of an invention as a result of the invention being worked in South Africa by way of reasonable technical trial or experiment does not destroy the novelty of that invention.

Inventiveness
An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art to which the invention relates, 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.

Prohibited subject matter
The Patents Act provides that the following do not comprise inventions for the purposes of the Act: a discovery; a scientific theory; a mathematical method; a literary, dramatic, musical or artistic work or any other aesthetic creation; a scheme, rule or method for performing a mental act, playing a game, or doing business; a program for a computer; or the presentation of information.

The Act excludes inventions only to the extent to which a patent or an application for the patent relates to an excluded category as such.  Thus, an invention, which relates only in part to one of the aforementioned categories, may still be patentable.  For example, even though software itself is not patentable, it is often possible to acquire patent protection for a system which incorporates such software.  Professional advice should be sought in this regard.

Certain other inventions are also excluded. These include: any variety of animal, plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of 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 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.

How do I know whether my invention is patentable?
Inventiveness is ultimately a subjective test, and thus it is very difficult to categorically say that an invention is obvious.  However, novelty is generally clearer and easier to determine.  There are numerous web sites that allow one to conduct basic international novelty searches, such as esp@cenet.  Although a search done by a patent attorney may sometimes be expensive, it may prevent one from wasting money unnecessarily on patent applications.

What are the differences between an inventor, an applicant and a patentee?
Every patent application must cite the inventor/s, an inventor being an individual who either came up with an idea or who devised (or contributed to) a detailed solution in response to an idea.  It is very important to correctly cite all the inventors in a patent application, failing which the patent may ultimately be open to attack down the line.
The applicant in a patent application is then the person or entity who files for a patent application, such as the inventor’s employer.  If the applicant is different to the inventor, proof must be provided that the applicant is entitled to file the application, with this proof typically taking the form of an assignment document signed by the inventor/s.
The patentee is then simply the owner of the patent, once it has proceeded to grant.

Do I have to use a patent attorney?
There are certain steps that by legislation can only be performed by a patent attorney, the primary one being the filing of the complete patent application.  Thus, any person may file his or her own provisional patent application at the South African Patent Office.  As tempting as this might sound, the provisional patent application is an important document, which will later form the basis for the complete patent application.  Since the provisional patent application forms the foundation for the complete application (and any foreign applications), it should be drawn up professionally and with great care.  The value of a patent ultimately lies in how the patent specification is written and later interpreted, as well as in whether all legal formalities are complied with.  It is thus advisable to use a well qualified and skilled draftsman in order to obtain the best possible protection for an invention.

What information must I provide my patent attorney?
The following information is usually requsted to enable a patent specification to be prepared:

1.  A written description of the invention, setting out details of the structure of the invention and the way it is operated.  This description should include the points of novelty, as well as a list of advantages, of the invention.  If there are similar inventions already available, the differences between the new invention and the previously known inventions would also be helpful.
2.  Drawings showing the structure and working of the invention, and in particular, the specific features of the invention that need to be highlighted.

It is important to have a complete and detailed description of every aspect of the invention.  The reason for this is that not only is it required by law to fairly describe an invention in a patent specification, but it may turn out that the novelty of the invention lies in some small, ostensibly insignificant component of the invention which has been described in the specification and/or shown in the drawings.

What rights does my patent provide?

The grant of a South African patent gives a patentee the right to prevent, in South Africa, other persons from making, using, exercising, disposing of, offering to dispose of, or importing the patentee’s invention.  Any of these acts constitutes an infringement of the patent (assuming, of course, that the patent is valid in the first place, as discussed above).  A South African patent lasts for 20 years, subject to annual renewal fees being paid.

How do I obtain patent protection in foreign countries?
As indicated above, foreign patent applications must be filed within 12 months of the filing date of the first patent application for the invention if the original filing date (called the priority date) is to be retained internationally.
The popular term “world patent” is a fallacy. “World patents” do not exist. Instead separate protection must be applied for in each country individually, except for the following:

1. The PCT Route :

The PCT (viz Patent Co-operation Treaty), also called an International Patent Application, is a route to obtaining the grant of separate (national) patents in most countries around the world, including South Africa.  A single PCT application is filed. A key advantage of this route is that costs are contained at this stage.  By requesting an international examination, an examination report is obtained.  Before expiry of a 30 month period from the priority date, separate national or regional patent application(s) must be filed.

The PCT route includes, at no extra charge, an international search and patentability opinion prepared by an International Searching Authority, such as the European Patent Office.  This will give a good indication of the patentability of the invention before patenting is proceeded with in the individual PCT contracting states.

2. The European patent

This patent covers all of the European countries which are members of the European Patent Convention, but not all countries in Europe are members of this Convention.

3. The OAPI Patent

This patent covers all of the following African countries:
Benin, Burkina Faso, Cameroon, Central African Republic, Congo, Cote d’Ivoire, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Mali, Mauritania, Niger, Senegal, Chad, and Togo.

4. The ARIPO Patent

This patent covers any of the following African countries designated by the patentee:
Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi, Mozambique, Sierra Leone, Somalia, Sudan, Swaziland, Uganda, United Republic of Tanzania, Zambia and Zimbabwe
South Africa is not a member of either ARIPO or OAPI but is a member of the International Patent Convention (also referred to as the Paris Convention) and is a contracting state of the PCT.