Any new invention may be protected by a patent. A patent is issued by the Patent Office on behalf of the State. A valid patent gives the patent owner the right to prevent others, without the owner's permission, from carrying out the invention covered by the patent document. This right is given for a maximum of 20 years in exchange for the disclosure of the invention to the public. The patent document is issued without any guarantee of validity and any person may apply to have the patent revoked, if they can prove that the patent is invalid. Patent law in South Africa is regulated by the Patents Act 57 of 1978.
What is an invention?
An invention is an idea which has been developed to a stage where it is capable of being put into practice and is new and not obvious. It is not necessary, for example, for a prototype to have been made, or engineering drawings done, for an invention to be patentable. The invention must be new worldwide, and a patent application must therefore be filed before the invention has been made available to the public anywhere in the world. Novelty can be destroyed even if the inventor makes the invention available to the public before patenting it.
How to determine if an invention is new?
In order to determine the novelty of an invention, searches can be made in three ways:
- A search through the records at the South African Patent Office. This search is limited in scope and will only reveal patents for similar inventions filed in South Africa.
- An international novelty search can be conducted using Spoor and Fisher's in-house computer based search facility by linking into international databases. This type of search is also limited in scope since the search is conducted along "keywords", and the search will thus only locate prior art documents which have used the selected key words somewhere in he document being searched. The databases also generally only contain data published since about 1970 so this type of search would not locate prior art material which was published earlier than that time.
- We are able to instruct a specialist overseas searching bureau to conduct a search. This type of search is usually the most comprehensive but, unfortunately, also tends to be the most expensive.
Who can apply for a patent?
Only the inventor, or a person who has acquired the right from the inventor, can apply for a patent. The inventor is the person who actually thought of the invention and not somebody who has seen it elsewhere, for example in a foreign country.
How is an invention protected?
Patent protection is obtained by filing a patent application at the Patent Office. A patent application is accompanied by a patent specification which can be in a "complete" form or in a "provisional" form. If a provisional patent application is filed it must be followed within a year by a fresh application in a complete form, if patent protection is still desired. A provisional application is usually filed when the invention in question is still under development. A complete application is usually only filed in the first instance if the invention in question is already fully developed and is thus unlikely to be changed or improved over the year ahead. The patent specification is a document describing the invention and how it works.
What is a patent attorney?
A patent attorney is a person with technical and legal qualifications, and who is further trained and qualified by examinations to write patent specifications, conduct patent litigation, file and prosecute patent applications and assist inventors generally to protect and benefit from their ideas.
Can a private person do his own patenting?
In South Africa such a person can prepare and file his own provisional application, but only a patent attorney can file a complete specification or make amendments to a complete specification. A person who prepares and files his own patent application runs the risk that through ignorance and inexperience he may file a specification which does not protect his invention to an adequate extent. A potentially valuable right may then be rendered worthless.
How valuable is a patent?
Obviously an invalid patent has no value. The value of a valid patent depends on a number of factors including, whether the patented product is already on the market, the consumer demand for the product and, if the product is not on the market, the ability of the patent owner or his licensee to ensure that the product reaches the market. Clearly, if the patent can be used to prevent any similar products coming onto the market, and there is high consumer demand for the invented product, then the patent will be of great value.
Why patent an invention?
Anybody with a new idea (assuming that the idea qualifies as an invention) can proceed to make money out of the idea in two ways:
- Produce the product of the idea and sell it without bothering about protection, or
- Secure patent protection for the idea and then create value in the patent.
If the product is simply put on the market without patent protection and there is no secret involved with its production, anybody else would be free to make and market a similar product. As a result the originator of the idea may soon find himself in a competitive situation with a consequent erosion of the profits he expected to receive by marketing and selling his product. If there is a secret related to its production, the secret may leak out or others may discover the secret quite independently and enter into competition with the original product.
People patent their inventions in the hope of making money out of them. This can be done in various ways:
- The patent owner can manufacture and market the product himself.
- The patent owner can license somebody else to manufacture and market the product. There are no fixed license fees and in each case it is a matter of bargaining for the best advantage to both parties.
Of course, there is a third way of making money out of a patent, to sell it outright. Unless the patent protects a product which has been proved in the marketplace, it is seldom that such a sale really produces a worthwhile price. It has happened that inventions are made which are so obviously valuable that purchasers are prepared to pay for the patent rights without proof of market success. However, prospective purchasers usually take the view that a patent owner who is not prepared to stand by his invention by accepting royalties, can have no faith in his invention.
There is no sure way of predicting in advance that a given idea will prove to be a commercial success. The only true test is the marketplace. Unfortunately one cannot first test the marketplace and then apply for a patent.
The period of one year within which to file a complete application after a provisional application is intended to provide a testing period, but in many cases the period is too short and applicants for patents do not do all that they can during this period.
Provisional or complete?
Once the decision has been taken to apply for a patent, the applicant has to decide whether he wishes to file a provisional application or a complete application. The advantages of a provisional application are:
- Since fewer formalities are involved, protection can be obtain more quickly.
- Even when prepared by a patent attorney, the initial cost is less than for a complete application.
- Improvements and developments made after the filing of the provisional application can be included in the complete application.
- The year of provisional protection allows for searches and other evaluations which may lead to improved formulation of the scope of the protection sought.
The main disadvantage of a provisional application is that the ultimate patenting costs are increased. A secondary disadvantage is that the grant of a patent will take place later than if a complete application had been filed in the first instance.
What information do you need to give to your patent attorney?
Should we be instructed to proceed with the preparation of a patent application, we will attend to the drawing up and completion of all forms which must accompany the application, as well as the drafting of the specification and preparation of any drawings which should accompany the specification. We will require at least the following information before we can begin with the preparation of the necessary documentation:
- The full names and physical addresses of all inventors (ie. all persons who have made a material contribution to the development of the invention); and
- The name and physical address of the applicant for the patent application, should the applicant be different from the inventor, for example a company or close corporation.
In order to prepare the specification and drawings, we will require at least the following information:
- A written description of the invention, setting out details of the structure of the invention, and the way in which it is operated and materials from which the invention may be constructed. It is also helpful if the various components which make up the invention are labelled and named.
- Details of any similar apparatus or methods, and how the invention differs from such known apparatus or methods.
- A list of the advantages and benefits that are associated with the invention.
- Details of any disclosures of the invention which may have occurred.
Claims are statements which define the scope of protection sought by the patent owner for his invention.
They are the most important part of a complete specification and they should be fairly based on what is described in the complete specification and, if there was a provisional application, on what is described in the provisional specification. Patent attorneys specialise in claim drafting and provisional specifications prepared by inventors themselves are frequently defective in that they do not provide a fair basis for what should eventually be claimed in a complete specification. In litigation and in the prosecution of foreign patent applications most of the discussion and controversy concerns the claims in the patent or the patent application.
Once the application is filed
Once an application has been filed, the invention may be disclosed to others without prejudicing the rights to be obtained on the grant of the patent. In order to justify the expense which has been incurred, an applicant for a patent should take active steps to exploit or obtain the exploitation of the invention. Only if commercial success is attained or there are prospects of commercial success would it be wise to follow a provisional application with a complete application and to file foreign applications for the invention.
We cannot stress enough that the first few months after the filing of an application are crucial. Unless the applicant for a patent is active during this time, his prospects of eventual success are small.
Foreign patent applications
A South African patent grants the patent owner patent rights in South Africa only. If protection is sought in another country, a patent application must be brought in that country. Such an application must be brought before the invention has been made available to the public or before 12 months have elapsed since the filing of the first South African patent application for that invention.
There is no such thing as a "worldwide patent", however, certain patent treaties allow patent applications to be filed in a number of countries simultaneously.
Foreign patent applications are expensive. Foreign applications involve filing costs, prosecution costs and maintenance costs. While filing and maintenance costs can be estimated with reasonable accuracy, prosecution costs cannot. The latter costs vary from country to country and depend on the nature of official objections raised by the Patent Office in question and the steps which need to be taken to counter these objections.
For more information, please feel free to contact our offices on +27 41 396 9200.