Introduction
What is not patentable?
Discoveries
Scientific theories
Mathematical models
Literary, dramatic, musical or artistic works, or any other aesthetic creation
Schemes, rules or methods for performing mental acts, playing games or doing business
Computer programs
Presentation of information
Inventions that encourage offensive or immoral behaviour
Varieties of animals or plants or any essentially biological process for production thereof
Methods of treatment of human or animal body
Inventions contrary to natural law
Inventions contrary to law
Nuclear energy and material inventions
Comment
There are several IP laws for protecting various intellectual property, such as patents, designs, trademarks and copyright. Each IP law defines the requirements for obtaining protection and exclusions from protection. For example, in the Republic of South Africa, the South African Patents Act 57 of 1978 (the Patents Act) mentions specific subject matter that is not patentable.
"Intellectual property" refers to the creations of the human mind and has been increasingly recognised through the years for the value it brings to the development and growth of society. IP laws encourage the continued growth and contributions of intellectual property by providing the creators protection for their intellectual creations.
The basic requirements for patentability are that an invention must be:
- new, in that it must not have been disclosed to the public in South Africa or internationally in any form (eg, oral or written form or use);
- inventive, in that it must not be obvious to a person skilled in the area of technology of the invention; and
- capable of being used or applied in trade, industry or agriculture.
The Patents Act states that the following are not patentable:
- discoveries;
- scientific theories;
- mathematical methods;
- literary, dramatic, musical or artistic works, or any other aesthetic creations;
- schemes, rules or methods for performing mental acts, playing games or doing business;
- computer programs;
- the presentation of information;
- inventions that encourage offensive or immoral behaviour;
- plant and animal varieties;
- methods of medical treatment;
- inventions contrary to natural laws;
- inventions contrary to the law; and
- certain inventions relating to nuclear energy and materials.
This is quite a long list. However, an invention that falls under one of the exclusions above might still be patentable: the Patents Act states that the invention is only excluded to the extent to which it relates to the exclusions above. No case law in South Africa has yet provided guidance on the practical use of this provision.
Other jurisdictions, such as European countries, have similar exclusions to South Africa, and the South African courts may be influenced by the case law in these countries. The commonality between the jurisdictions is that protection can be obtained if the invention contributes a "technical character or effect" having regard to the invention as a whole and does not simply relate to the exclusion itself.
Why is there a list in the Patents Act excluding particular inventions from patentability? Is there a way to protect inventions that, at first glance, seem to be "unpatentable"? The remainder of this article provides a closer look at the exclusions outlined above.
A "discovery", according to the Oxford Dictionary, is the action or process of discovering or being discovered. Therefore, it already exists, and it has now been discovered. Examples of discoveries that are unpatentable are:
- the new hominin species (ie, Homo naledi);
- a coronavirus disease; and
- the Higgs boson.
Although these discoveries are not patentable, a new invention related to a discovery could be. For example, a scientist may be able to determine the species based on the DNA from a hominin fossil, and that method of identifying a species based on the analysis of DNA could be patentable. Similarly, a vaccine developed to prevent a new coronavirus disease would be patentable. The "Higgs boson" is one of the elementary particles that make up the standard model of particle physics and is associated with the Higgs field. Although the Higgs boson is not patentable, the Hadron collider – which is a particle accelerator that accelerates the speed of particles close to the speed of light to explore different theories of particle physics – is patentable.
A "scientific theory", according to the Oxford Dictionary, is a coherent group of propositions formulated to explain a group of facts or phenomena in the natural world and repeatedly confirmed through experiments or observation. This ties in with a discovery, but research and experiments are required to prove a scientific theory. Examples of scientific theories that are unpatentable are:
- Einstein's theory of gravity;
- the laws of thermodynamics;
- Newton's law of motion; and
- string theory.
Inventions that implement a practical use of scientific theories and that produce a technical effect are patentable, such as a quadcopter drone (known as an "unmanned aerial vehicle"), which can have a multitude of embodiments that can be patentable, including:
- the ability to be suspended in the air;
- input controls for flying the drone;
- collision detection systems; and
- autopilot systems.
The James Webb Space Telescope is a space telescope designed to study astronomy and cosmology such as the first galaxies in the universe. It is patentable because it has improved infrared resolution and sensitivity so that it can detect objects that are old and distant.
"Mathematics", according to the Oxford Dictionary, is the branch of science concerned with number, quantity and space – that is, abstract science. A mathematical method is a formula (ie, a set of instructions) and is linked to a scientific theory. Examples of mathematical methods that are not patentable include:
- statistics;
- calculus; and
- trigonometry.
An invention comprising a mathematical method that contributes to a technical effect is patentable. The aforementioned examples of quadcopter drones and the James Webb Space Telescope are patentable.
Literary, dramatic, musical or artistic works, or any other aesthetic creation
This form of intellectual property is protected by the Copyright Act 98 of 1978 (the Copyright Act). For example, books, plays and paintings are not patentable.
Even though the aesthetic creation itself is not patentable, an invention that has a technical effect and that produces an aesthetic creation is patentable – for example:
- a 3D printer that prints physical objects such as a sculpture based on a 3D model; or
- improvements in musical instruments.
Schemes, rules or methods for performing mental acts, playing games or doing business
A scheme, rule or method for performing a mental act or playing a game relates to steps or methods performed mentally – that is, in the human mind. For example, methods for playing monopoly, scrabble and chess are unpatentable. However, board games and their pieces are patentable.
A scheme, rule or method for doing business typically relates to the operational process of a business. For example, a method of increasing a client's profile by holding a client event is unpatentable as there are no technical means and it would simply involve collecting and analysing information on potential clients, sending invites and organising a client event.
A patentable method of doing business would be a method that involves a physical object or provides a technical effect – for example, a touchless payment system that improves the payment process by customers.
A program for a computer typically refers to the written source code of the program or a method of carrying out steps on the computer, and the Copyright Act protects the source code. For example, written source code for Microsoft Windows, Google search engine, and Apple iTunes are unpatentable. However, a program for a computer that involves a physical object or provides a technical effect when run on the computer is patentable – for example:
- robotic bees;
- surgical robots;
- the global positioning system; or
- Bluetooth inventions.
The presentation of information relates to conveying information, either written or verbally. This form of intellectual property is protected by the Copyright Act. For example, the following are unpatentable:
- a set of written instructions to play a game;
- a PowerPoint presentation; and
- a user manual.
Even though the presentation of information itself is not patentable, an invention that has a technical effect which presents the information is patentable – for example:
- a virtual reality generator for displaying information;
- a 16K display resolution; or
- a 3D display.
Inventions that encourage offensive or immoral behaviour
The Patents Act provides that a patent shall not be granted for an invention where the publication or exploitation of which would be generally expected to encourage offensive or immoral behaviour.
The registrar has the discretion to refuse a patent application if it appears to them that the invention could be used to encourage offensive or immoral behaviour, irrespective of whether it meets the patentability requirements – for example, the processes of cloning humans and genetically modifying human embryos to include or remove a gene associated with a disease, which are also illegal.
Varieties of animals or plants or any essentially biological process for production thereof
The Patents Act provides that a patent shall not be granted for an invention for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process.
The biological process for the production of animals or plants refers to processes that would occur naturally with no technical interference, such as a method of cross-breeding or selective breeding of plants or animals.
A microbiological process refers to technical interference by modification on a microlevel. A microbiological process and its products are patentable. For example, a genetically modified plant is patentable.
Methods of treatment of human or animal body
An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not patentable. The rationale of the exclusion is not to hinder a doctor or vet from treating patients or animals due to the fear of patent infringement.
The Patents Act also provides that an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body can be patentable, provided that the use of the substance or composition is novel and inventive. Therefore, the use of a known substance or composition is patentable.
Inventions contrary to natural law
The Patents Act provides that an invention may be refused on the ground that it claims as an invention anything obviously contrary to well-established natural laws. The registrar has the power to refuse such patent applications. Examples include:
- a perpetual motion machine; and
- a machine that has no input but an output.
Inventions that fall within this category are not patentable.
The Patents Act provides that the registrar has the power to refuse an invention that is contrary to the law. Examples include the processes of cloning humans and genetically modifying human embryos to include or remove a gene associated with a disease.
Inventions that fall within this category are not patentable.
Nuclear energy and material inventions
The Patents Act provides that inventions relating to the production or use of nuclear energy or to the production, processing or use of nuclear material or restricted matter as defined in section 1 of the Nuclear Energy Act 1999 are not patentable.
This relates to inventions that will affect the national security of South Africa or that go against the Nuclear Non-Proliferation Treaty or the Safeguards Agreement or in terms of any other agreement of that kind between South Africa and any other state or any international or multinational nuclear agency or institution. Examples include:
- nuclear material for weapons; and
- nuclear bombs.
On the one hand, the Patents Act has a long list of exclusions to patentability. However, on the other hand, there are caveats to most of the exclusions. An invention needs to be thoroughly assessed to better understand its unique and inventive features. It may well be possible to obtain patent protection for an invention that, at first glance, appears not to be patentable.
For further information on this topic please contact Yogani Reddy or David Cochrane at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected] or [email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.