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