Patents for inventions are granted in terms of the 1978 Patents Act.

Patent law over the years has become complex and this document is not intended to be a full exposition of the law. It is intended to give basic information to anyone intending to seek protection for an invention, particularly someone proposing to seek protection for the first time.

Please contact us if any topic is of particular concern to you and is not dealt with in this synopsis or is not dealt with in sufficient detail to answer your question.

What can be patented?

The Patents Act approaches this question in a positive sense and in a negative sense.

Firstly, the Act states that a patent can be granted for a "new" invention, which involves "an inventive step" and which is capable of being used or applied in trade, industry or agriculture. Secondly, the Act then lists those items which are not deemed to be patentable inventions, the most important of which are :

Programs for computers (protected by the Copyright Act) and schemes, rules or methods for:
performing a mental act;
playing a game;
doing business.

This latter provision largely, but not entirely, makes it impossible to obtain valid protection for a board game.

The meaning of "new"

A basic feature of all patent systems is that an invention must be "new" before it can form the subject of a valid patent.

The definition of the term "new" varies from country to country. In South Africa an invention is new if it does not form part of the state of the art immediately before the related patent application is filed. The expression "state of the art", generally, includes everything that has been made available to the public in any way and anywhere in the world.

This definition makes it impossible for valid patent protection to be obtained in this country for a product which is seen in another country. A product in use, advertised overseas or otherwise disclosed is not new as it has already been made available to the public.

Disclosure or use by you of your own invention, prior to the filing of a patent application, makes it available to the public and will prevent a valid patent from being obtained by you.

Hence maintaining the invention secret until after an application has been filed is essential.

Requirement of an "inventive step"

This requirement has evolved over the years and its purpose is to prevent patents being granted for trivia, or what are sometimes called mere workshop improvements. Whether or not an invention is obvious depends on expert evidence.

The prudent course, even if the improvement to be protected might possibly be one that could be shown to be obvious to a person skilled in the art, is to secure grant of the patent if the improvement has commercial value. The onus of proving obviousness and invalidity will then rest on the party trying to have the patent revoked. Even a patent of suspect validity can sometimes deter would-be competitors.

The Applicant

The inventor of an invention is entitled to seek patent protection, as well as any person to whom the invention has been assigned. These provisions form a second bar to an invention seen overseas and brought back to this country from validly being patented. The applicant in such circumstances is not the inventor and is not the assignee of the inventor.

An invention made by an employee in the course and scope of his employment usually belongs to his employer.

Procedure for filing

	Unless there are exceptional circumstances, it is recommended that the first stage in any patenting program be the filing of an application, accompanied by a provisional specification.
	The provisional specification remains pending for a period of one year (with a possible three month extension if a fine is paid) and during that time the invention can be developed, disclosed to the public and exploited. Disclosure during this period will not affect the ability to secure valid protection.
	In the event that the invention is commercially successful, or at least still appears to have commercial prospects, an application accompanied by a complete specification can be filed during this one year period. The patent is granted on the basis of this complete application.
	In exceptional circumstances a complete specification can be filed in the first instance, but this route is not recommended.

Post filing matters

Subject matter and name searching

Subject matter searches fall into two main categories :

A novelty search, which can be carried out anywhere in the world, is intended to find out whether or not an invention which is to be patented is already known. Such a search can also be used to determine if a granted patent is valid.

Practically only classified literature, which means patent specifications, can be searched successfully and within a reasonable budget. Most novelty searches are carried out through European, United Kingdom, Patent Cooperation Treaty and United States specifications.

An infringement search, which of necessity is carried out where the invention is to be exploited, is intended to locate any prior patents that might be infringed by exploitation of the invention.

Subject matter searching can be expensive and it is recommended that one only be carried out when the results have some immediate significance, and not merely for the sake of knowing about prior disclosures.

A novelty search would, for example, be recommended before filing an expensive set of foreign patent applications and an infringement search before investing large sums in preparing to exploit an invention.

A name search determines if a particular party owns any patents or patent applications, or whether a particular person has been named as an inventor.

Patents in foreign countries

South Africa is a member of the International Convention. This means that, in most countries of the world, foreign patent applications can be filed in the period of one year following filing of the first South African application in respect of the invention. The foreign applications are, in effect, back-dated to the date of filing in South Africa.

This procedure is advantageous as it enables the applicant to defer, for up to a year, the substantial costs of foreign patenting, whilst still giving the applicant a so-called "priority date".

Disclosures by the applicant or others of the invention contained in the South African application after it has been filed, cannot generally be used for the purpose of refusing a foreign patent or invalidating any foreign patent granted.

Not all countries are members of the International Convention. Namibia and Taiwan are non-members that may be important to a South African applicant. If protection is required in these countries, or in certain South American countries, applications might have to be filed before the invention is disclosed.

Being aware at an early date of the possible pitfalls involved in securing protection outside South Africa can prevent rights being lost by failing to adhere to time limits or by falling foul of some specific requirement of the law of the foreign country.

Further information on the filing in foreign countries is available on this site.

Infringement Proceedings

The onus rests on the patentee to enforce the rights acquired in a patent owned against an alleged infringer. Infringement proceedings are expensive and a patentee, unless a corporation of considerable size, might well find the costs of such proceedings daunting.

Only a patentee holding a patent pertaining to an invention which has been a significant commercial success would probably enforce the patent through an infringement action.