Patents

A patent is an instrument that gives an owner an exclusive or monopoly right over an invention, which is a product or a process that provides a new way of doing something or offers a new technical solution to a problem.

The patent allows the owner to exclude others from, among other things, making, using, exercising, disposing of, offering to dispose of, or importing the invention.

An invention can take a number of forms, including a process, a method, a machine, a device, a new material, a chemical compound or chemical composition. The precise requirements for patentability depend on the law of the country concerned. Generally speaking, to be eligible for patent protection, an invention must:

be new, in that it is not previously known anywhere in the world (novel);

not be an obvious variation on known technology (inventive); and

be capable of being applied in trade, industry or agriculture (useful).

If your invention meets these criteria, it’s likely to be patentable in most countries.

Searches are conducted to determine if an invention is novel and inventive. The aim of the search is to identify what is referred to as “prior art”, which is technology or similar products/services that are already known. Identifying this prior art is a critical step in determining whether an invention is patentable and whether meaningful patent protection can be secured for the invention.

These searches can be conducted using a number of different sources:

the inventor’s knowledge in the field of the invention;

the internet;

keyword searches through the online records of Patent Offices;

keyword searches through the paper-based records of Patent Offices; and

technical literature.

These different types of searches vary in complexity, reliability and cost.

Once an invention has come into being, you’ll need to decide whether or not to protect it with a patent. There’s always an option not to file a patent application and to protect the invention by keeping it a secret, and this may be an appropriate strategy to follow in certain circumstances.

But this can only be done where the confidentiality of the invention can be preserved and the invention does not become self-evident from the product/service that is sold or used commercially. Also, if a competitor independently develops the same invention, you would have no mechanism to prevent him from dealing in that invention.

Even if you decide to file a patent application, it’s important to keep the invention confidential, at least until the first patent application has been filed.

This is because any prior non-confidential disclosure of the invention (even your own use or disclosure) may destroy the novelty of your invention.

All forms of non-confidential disclosure must be avoided, including the sale of products/services embodying the invention, the implementation of the invention for any purpose other than reasonable technical trial, the publication of articles about the invention, or the disclosing of the invention in communications to prospective customers and commercial partners.

Once the patent application has been filed, you can disclose the invention to others without prejudicing its novelty.

The document that describes the invention is known as a patent specification. It not only describes the invention but also defines, in “patent claims”, the specific features of the invention that enjoy protection.

The priority date of an invention is the date on which its first patent application is filed and the novelty and inventiveness of the invention is adjudicated.

A patent right is restricted in a number of ways.

First, it is limited to the countries in which the patents for that invention are granted.

Second, it is limited to a maximum term, subject to renewal fees being paid to maintain the patent in force. In South Africa, the maximum term is 20 years.

Finally, the claims of the patent define the specific features of the invention that enjoy protection under the patent.

Once a patent is granted in a particular country, you’re entitled to prevent others from carrying out a range of commercial activities relating to that invention. In particular, you can prevent others from:

making a protected article in that country;

importing a protected article into that country;

using the protected article in that country;

marketing, selling and renting a protected article in that country;

exercising or using a protected method in that country; and

licensing any other person to carry out any of these acts.

Bear in mind that a patent granted in a particular country will only provide patent protection in that country. During the patenting process you must decide where patent protection is required.

The processes usually followed to pursue the grant of patent protection for an invention in countries other than the country of the priority application, are:

filing complete patent applications in the countries for which protection is sought within 12 months of the priority date and prosecuting these applications to grant; or

filing a Patent Cooperation Treaty (PCT) application.

The Patent Cooperation Treaty (PCT) is an international treaty that provides a unified procedure for filing patent applications to protect inventions in each of the member countries (currently about 140 countries, including South Africa).

A PCT patent application does not result in an “international patent” being granted. In fact, there is no such thing as a “worldwide” or “international” patent. At the end of the PCT process, the applicant is still obliged to file complete patent applications in each country in which protection is sought.

A PCT application must be filed within 12 months of the priority date of the invention. Thereafter, the examining office conducts a search to identify prior art relevant to the invention. This provides a good indication of the patentability of the invention before substantial costs are incurred.