Introduction

A patent is an exclusive right or monopoly which is granted by the state to a person, persons or legal entity for the right to exclude third parties from exploiting a patented invention for a limited period in a specific territory.

Patents are territorial and must be applied for in every country where patent protection is required.

This article discusses the nuances of South African law in this regard.

Patentable invention

An invention (which may include an article, an apparatus, a product, a device, a process or a method) is patentable if it is new, inventive and useful.

Novelty

An invention is new if it does not form part of the state of the art. The state of the art comprises all matter (prior art) which has been made available to the public, in any way, before the date of filing a patent application for the invention. In other words, an invention, which is known to the public, is not patentable as it is not regarded as new. For this reason, inventors should keep their inventions secret until they file their patent applications.

As stated above, the prior art or state of the art comprises "all matter which has been made available to the public". This means that any publication, including marketing material or use of any other disclosure of an invention, falls within this provision.

In South Africa the state of the art also consists of prior patent applications (pending patents) which have been filed in South Africa, despite the fact that such prior applications were not open to public inspection and were unknown to the public at the time of filing the first patent application for an invention. Also included as part of the state of the art are later patent applications claiming an earlier priority date from an application for a patent filed in the convention country. The priority date of a patent or patent application is the date on which a first patent application for the invention is filed. Thus, it is important to file a patent application for an invention as soon as possible after the invention is made, as a prior patent application or a patent application claiming an earlier priority date forms part of the state of the art in accordance with the South African Patents Act (57/1978).

Searches are conducted to establish whether an invention is new. However, the cost of a search is not always justifiable and, in some cases, a patent application is filed subject to the risk of the invention to which it relates not being new.

An invention that is used secretly and on a commercial scale in South Africa also forms part of the state of the art. An example of such an invention is where an inventor commercially but secretly uses new or special tools in an industry. The tools themselves would not be patentable once they are used on a commercial scale even if they are not disclosed to third parties. Third parties also cannot obtain a valid patent for the tools after such secret commercial use, as the tools form part of the state of the art.

Inventiveness

An invention involves an inventive step if it is not obvious to a person who is skilled in the art, having regard to any matter which was available to the public, immediately before the filing date (priority date) of a patent application for an invention.

The Patents Act does not require a quantitative test for inventiveness but rather a qualitative test. The invention must not be obvious to an ordinary person skilled in the art having regard to all matter available to the public immediately before the date on which a first patent application for the invention was filed. The quantity of inventiveness is not in issue. Further, the skilled person is a person with ordinary skill in the art and not a specialist or highly qualified person in the art. Specialist doctors would be ordinary people skilled in their art. However, some specialist doctors may have additional qualifications such that they will not be regarded as ordinary people skilled in the art.

Usefulness

The Patents Act states that a patentable invention must be capable of being used or applied in trade, industry or agriculture. The act also states that a patent may be revoked where the invention, as illustrated or exemplified in the patent specification, cannot be performed or does not lead to the results and advantages set out in the patent specification.

Thus, a patentable invention must be useful.

The invention does not have to be a commercial success. However, the commercial success of the invention may indicate that an invention is useful.

What is not patentable?

The Patents Act states that anything which consists of the following will not be considered an invention for the purposes of the act:

  • discoveries;
  • scientific theories;
  • mathematical methods;
  • literary, dramatic, musical or artistic works or any other aesthetic creations;
  • schemes, rules or methods for performing a mental act, playing a game or doing business;
  • computer programs; or
  • presentations of information.

Notably, only the above items are not patentable. For example, the presentation of information is not patentable but a method of presenting information or an article that presents information may be patentable if such a method or article is new, inventive and useful.

A computer program itself is also not patentable but a method or system that uses one to provide a certain result may be patentable. A computer with a particular program in its memory may also be patentable.

A patent will also not be granted for an invention of which the publication or exploitation would be generally expected to encourage offensive or immoral behaviour.

Special patentability provisions

Animals, plants and biological processes

A patent cannot be obtained for any variety of animal or plant or any essentially biological process to produce animals or plants, which is not a microbiological process or the product of such a process.

The product of a microbiological process as well as the process itself may be patentable. For example, such processes and products are found in the manufacture of antibiotic medicines. Again, the process or product must be new, inventive and useful to be patentable.

Treatment of human or animal body

A method of treatment for the human or animal body by surgery or therapy, or by diagnosis practiced on the human or animal body, is not patentable. There is some uncertainty as to whether preventative treatment of the human or animal body is patentable. In most cases, this would depend on the specific invention. For example, treatment of the human or animal body to promote growth could be patentable if such treatment is not done by surgery, therapy or diagnosis. The treatment of body tissues or bodily fluids that are separate from the human or animal body could also be patentable.

A product consisting of a substance or composition for use in a method to treat the human or animal body is patentable if the substance or composition is new, inventive and useful.

New medical use of known substance or composition

If an invention consists of a substance or composition for use in a method to treat the human or animal body by surgery or therapy, or by diagnosis practiced on the human or animal body, the fact that the substance or composition forms part of the state of the art does not prevent a patent being granted for the invention if the substance or composition in any such method does not form part of the state of the art at that date.

In other words, a new medical use of an old substance or composition is patentable. Such medical use must be new, inventive and useful.

A South African provisional patent application or complete patent application in the first instance provides the applicant with an option to apply for patents in most other countries of the world under the provisions of an international convention. However, this option must be exercised within 12 months of the provisional patent application's filing date in South Africa. This 12 month period cannot be extended.

Applying for patents

Only the inventor or any other person or entity that has acquired the right to apply from the inventor can apply. A patent may be applied for jointly by the inventor or such other persons.

Thus, a patent application may be filed in the name of a legal entity (eg, a company) that has acquired the right to apply for a patent from the inventor. A patent application can also be filed in the name of two or more persons or entities as co-applicants.

What are the rights afforded by patents?

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

  • making the invention;
  • using the invention;
  • exercising the invention;
  • disposing or offering to dispose of the invention; or
  • importing the invention.

Therefore, the patentee will have and enjoy the whole profit and advantage acquired by reason of the invention.

Once the application has been filed, a filing or effective date (priority date) is established. Novelty is considered only up to this date. The invention may then be disclosed to others without fear of destroying the invention's novelty.

The filing of a patent application does not give the patentee rights to manufacture or apply the invention as there may be earlier patent rights covering it. This can be determined only by conducting a patent search.

The grant of a patent does not allow the patentee to immediately stop an infringer through court proceedings. Such proceedings may only be instituted after nine months from the date of grant (or sealing) of the patent. However, if a good cause exists to start proceedings earlier the commissioner of patents may be approached for leave to do so.

Patents longevity

A patent lasts for a maximum period of 20 years from the complete application's filing date (or from the international filing date in the case of South African national phase patent application emanating from a Patent Cooperation Treaty application), provided that it is kept in force by payments of the necessary renewal fees. The 20-year term cannot be extended.

What territory do South African patents cover?

A South African patent covers only the territory of South Africa. Separate patent applications must be filed in every other country in which patent protection is required.

Complete patent application filing

A complete patent application must be filed within 12 months of the provisional patent application's filing date. The provisional application will lapse if a complete application is not filed within 12-months. However, where patent protection is sought only in South Africa, a complete patent application can be filed within 15 months of the South African provisional application's filing date.

Patent licences

When a licence is granted over a patent, the effect is to give the licensee a right to do what they would otherwise be prohibited from doing (ie, a licence makes lawful what otherwise would be unlawful).

A licence may be exclusive, sole or non-exclusive.

An exclusive licence permits only the licensee and persons authorised by the licensee to exploit the invention and therefore excludes all other persons from doing so, including the patentee.

A sole licence permits the patentee to work the patent but prevents the grant of additional licences as opposed to an exclusive licence that excludes the patentee from exploiting the patented invention.

A non-exclusive licence allows the patentee to retain the right to exploit the licensed property as well as the right to grant additional licences to third parties.

Compulsory licences

A first patent (often referred to as the main patent) may cover claims for an invention, which allow for further inventive developments to take place. Such an inventive development may be covered by a subsequent dependent patent which has a different patentee to the main patent.

Therefore, the dependent patentee cannot then apply their invention, for which they have validly obtained patent rights, because it would infringe the main patent. On the other hand, the patentee of the main patent cannot apply the invention as covered by the dependent patent because an infringement of the dependent patent would arise.

This is a stalemate situation, which often leads to negotiations between the parties and results in the grant of cross-licences.

However, if an agreement cannot be reached, Section 55 of the Patents Act provides that the dependent patentee can apply to the commissioner for a licence under the main patent. The commissioner may then grant the licence on the terms and conditions that they deem fit, but must include a condition that the licence can only be used for the purpose of permitting the dependent patent to be worked.

Therefore, under the obtained licence, the dependent patentee cannot apply the invention as covered by the main patent. In all cases, the invention of the dependent patent would have to be applied.

The commissioner would also not grant such a licence unless:

  • the invention as claimed in the dependent patent involves an important technical advance of considerable economic significance in relation to the invention as claimed in the main patent. This means that an unimportant or simple variation as covered by the dependent patent would not necessarily facilitate the grant of such a licence;
  • the patentee of the dependent patent must also grant a cross-licence to the proprietor (under reasonable terms) to allow the patentee of the main patent to use the invention claimed in the dependent patent; or
  • the use that is authorised in respect of the main patent cannot be assigned except with the assignment of the dependent patent (ie, the licence is linked to the dependent patent).

In addition to the grant of a compulsory licence in the case of a dependent patent, the Patents Act provides for the grant of a compulsory licence under certain circumstances where the rights in a patent are being abused. In such cases, a compulsory licence is provided for on application to the commissioner of patents.

The act sets out four situations under which compulsory licences may be granted:

  • non-working – if the patented invention is not being worked in South Africa on a commercial scale or to an adequate extent after the expiry of a four-year period subsequent to the filing of the application of the patent or three years subsequent to the date on which that patent was sealed (whichever period expires last). In the opinion of the commissioner there must be no satisfactory reason for such non-working;
  • demand not met – if the demand for the patented article in South Africa is not being met to an adequate extent and on reasonable terms;
  • public interest – if the trade, industry or agriculture of South Africa, the trade of any person or class of persons trading in South Africa or the establishment of a new trade or industry in South Africa is being prejudiced because the patentee refuses to grant a licence or licences on reasonable terms; and
  • demand met by importation – if the demand in South Africa for the patented article is being met by importation and the price charged by the patentee, their licensee or agent for the patented article is excessive in relation to the price charged in countries where the patented article is manufactured by or under a licence from the patentee or their predecessor or successor in title.

In the first situation (ie, non-working) a compulsory licence will be issued to force the patentee to work their invention in South Africa within three or four years. This situation arises where a patentee does not seek to obtain a patent in order to apply the invention but merely to prevent other parties from applying the invention.

The second situation (ie, demand not met) arises when there is a demand in South Africa for the patented article and yet this demand is not being met to an adequate extent and on reasonable terms. Such a situation would apply particularly in the case of pharmaceuticals where there is a critical demand for the particular pharmaceutical and yet unsatisfactory quantities are being supplied to South Africa and unreasonable prices are being charged.

The third reason (ie, public interest) seeks to protect the trade, industry or agriculture in South Africa or the establishment of any new trade or industry in South Africa. In other words, a compulsory licence will be issued if the patentee, by way of their particular patent rights, prevents the invention in question from being applied in South Africa and this results in a disadvantage for trade, industry or agriculture or the trade of any person or class of persons in South Africa.

Finally, the fourth situation (ie, demand met by importation) arises where a particular article is manufactured in a low-cost country (eg, India or China) and yet the article is then exported to South Africa and sold for a price which is based on cost calculations for producing such an article in high-cost countries (eg, European countries or the United States).

In any such application to the commissioner of patents, the patentee or any other interested person may oppose the application.

The commissioner must consider the following when determining whether to grant a compulsory licence:

  • The commissioner must consider the application on its merits.
  • The commissioner may order the grant to the applicant of a licence on such terms and conditions as they may deem fit, including a condition precluding the licensee from importing any patented article into South Africa.
  • If the commissioner is not satisfied that the grant of a licence is justified, they may refuse the application.
  • A licence granted by the commissioner must include a provision that, subject to the adequate protection of the legitimate interests of the licensee, on application by the patentee the licence may be terminated if the circumstances which led to the grant of the licence cease to exist and if, in the commissioner's opinion, they are unlikely to recur.
  • The licence must be non-exclusive.
  • The licence cannot be transferable, except to a person to whom the business or part of the business in connection with which the rights under licence was exercised has been transferred.

Requirements for patent specifications

Not just any document can be submitted to the Patent Office and be described as a patent specification. There are several formal and substantive requirements directed towards specifications. As far as the formal requirements are concerned, multiple regulations prescribe, for example:

  • required line spacing;
  • conventions regarding scientific measurements; and
  • formalities for accompanying figures.

Patent attorneys should attend to these formal aspects. As far as the content of a provisional patent specification is concerned, the specification must fairly describe the invention.

The corresponding requirements for complete patent specifications are more onerous; these specifications must sufficiently describe the invention (ie, not only fairly describe the invention). Examples of the invention, as well as the manner in which it is to be performed, must also be provided. When assessing whether the content of the specification is sufficient, the test to be applied is whether the examples are sufficient "to enable the invention to be performed by a person skilled in the art".

In cases where an invention can be performed in several ways it is advisable to describe in the specification the best method of performing the invention. While this is not a prescribed requirement under South African law, it is often generally advised.

Patent specification's anatomy

A complete patent specification must include each of the following:

  • a title that is short, specific and not descriptive of the invention.
  • a description and, where appropriate, illustrations and examples to enable the invention to be performed by a person who is skilled in the art.
  • a set of claims defining the invention – generally speaking, the claims may be regarded as the heart of the patent application invention as it is in the claims that the scope of protection is set out.
  • an abstract that is narrative in nature and generally limited to a paragraph not exceeding 150 words – an abstract may be regarded as being a technical snapshot of the invention.

Strictly speaking, these requirements do not apply to a provisional patent specification. However, it is often good practice among patent attorneys, wherever possible, to include a title, description and examples in a provisional specification. These specifications will also include 'consistory clauses', which help to define the invention and will form the basis for formulating the claims of what will become a complete patent specification. This is done to ensure that priority can be claimed from the provisional application when complete and foreign applications are filed.

Finally, while it is not compulsory, provisional and complete patent specifications may also include a background section, which describes the current art and prior art and the problems with these. This often assists in laying a platform for describing the benefits derived from the application of the invention.

Determining scope of protection and content of disclosure

The difference between the scope of protection and the content of the disclosure, although sometimes subtle, is crucial.

First, it is important to consider that the boundaries of protection afforded by a patent are defined in the claims of a patent. Thus, for example, when assessing whether a particular article infringes a patent, the claims of the patent (eg, not the abstract's content of the patent) must be compared against the allegedly infringing article. Generally, the claims stand on their own. However, it is sometimes permissible to refer to the body of the specification (including the description and examples of the invention); this happens most frequently when definitions are inserted into the body of the specification.

It is an entirely different question to ask what content is disclosed by a particular patent. For example, this question is relevant when conducting a novelty search to determine whether the contents of a particular patent specification anticipate the novelty of a current invention. Under South African law, the whole contents approach is adopted and, as the name implies, all matter contained in a prior art patent specification (and not only the claims) may be considered.

For further information please contact At Van Rooy at KISCH IP by telephone (+27 11 324 3000) or email (atv@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

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