Patent protection--Locally

Patents and provisional patent applications are issued by the Registrar of Patents in Pretoria and are granted in terms of Section 25 of the Patents Act for new and non-obvious inventions that can be applied in trade, industry, or agriculture.  An invention may be a new product, process, appliance or composition, or an improvement to any existing product, process, appliance or composition.  A discovery of something that already existed, although it was not previously known to humans, cannot be patented since the discovery is due to chance; an invention, on the other hand, requires creative thinking on the part of a person. 

The applicant for a patent must be the rightful owner of the invention.  A patent involves a monopoly of limited duration for the exploitation of the invention.  It excludes others from manufacturing, using, or selling the invention for a limited period (20 years from the date of submission of the patent application).  A provisional patent application provides short term international protection for a period of 12 months, after which a full patent application must be lodged.  Renewal fees are payable annually from the end of the third year after application was made for the full South African patent.  The protection of the patent lapses if the renewal fees are not paid, unless an extension of time was requested for the payment, which extension may be granted for a maximum period of six months.

Certain inventions and creations are statutorily excluded from patent law protection, including the following:

·   creations that fall purely under the Copyright Act (e.g. literature, aesthetic designs, software);

·    schemes, rules and methods for performing a mental act, doing business, or playing a game;

·    scientific theories and mathematical methods and formulae;

·   the presentation of information (e.g. a database);

·  plant and animal varieties and biological breeding methods (in this regard one should look at protection under the Plant Breeders’ Rights Act, 15 of 1976); and

·  methods of medical treatment (although medicine or medical apparatus or instruments are patentable).

(b)Protection of patents internationally

 A South African patent enjoys protection only within the territorial   limits of South Africa.  For protection in other countries, separate patent applications have to be made in each of the countries in question.  The application procedures, regulations in respect of patentability, and the period of patent protection differ significantly from country to country.

Since 1999 South Africa has been recognised as a member of the Patent Cooperation Treaty (PCT) of 1970.  Under the PCT system, only one patent application needs to be lodged in a PCT country in order to enjoy preliminary international protection of the patent rights.  This protection is then valid for twenty (20) months (and in some cases for up to thirty (30) months) from the date of registration of a preliminary patent in the first PCT country of registration.  The extended period affords the inventor, or the holder of his/her rights, enough time to conduct thorough market research and product development without incurring unnecessary legal and especially translation costs.  The PCT system effectively defers costs, with the inventor still being protected by law while choosing countries for final registration more deliberately, undertaking translation more selectively, and containing legal costs in general.

The PCT system only applies to patent rights in the PCT countries.  The protection of other intellectual property rights still occurs in accordance with current practices and treaties.  The University normally follows the PCT route for international protection of its portfolio of patents on account of the obvious benefits of the system, as set out above.

(c)Ownership of patents

According to the Patents Act, the person who may apply for a patent is the inventor of the invention in question.  A simple but acceptable definition of an inventor would be the first creator of the invention.  If the work was produced in the normal course and scope of an employee’s employment, the employer has a contractual claim to the patent rights.  In the context of a university, this means that the employee qualifies to be the inventor of a patent.  The patent rights, however, do not automatically vest in the employer, as is the case with copyright, but the employer is entitled by law to stipulate in a contract of employment that the patent rights be assigned to it (the employer) as long as the invention was created in the “course and scope” of the employee’s employment.

Section 59(2) of the Patents Act does protect the rights of the employee in certain cases, and reads as follows:

"(2) Any condition in a contract of employment which -

(a) requires an employee to assign to his employer an invention made by him otherwise than within the course and scope of his employment; or

(b) restricts the right of an employee in an invention made by him more than one year after termination of his employment, shall be null and void.”

The right of an employee to exercise this claim depends, in turn, on whether the invention was made within or outside of the normal course and scope of his/her employment; only in a case where the invention was made outside of this course and scope is the employee entitled to claim ownership.

When a lecturer in Philosophy invents a new can-opener, for example, the University obviously has no claim to a patent the lecturer may take out for the invention; if a lecturer in Mechanical Engineering should also invent and patent a new can-opener, the question is more difficult to answer (on account of the trivial nature of the invention within the particular discipline).  Does designing a can-opener fall within the course and scope of the latter lecturer’s duties as employee?

Dr Tim D. Burrell (author of Burrell’s South African Patent and Design Law, page 292) suggests the following as the cardinal test regarding ownership of patent rights: "If the employee was directed by his   employer to apply his energies to the inventive concept in issue and refused to do so, would the employee be in breach of his contract of employment?  If so, then one could probably conclude that the invention was made in the course and scope of the employee's employment.”.

Posted in: PATENTS