How to patent an idea in South Africa in three parts: Part two

17 May 2023

In this series, we’re covering what to expect when you meet with a patent attorney for the first time. By this point, you would have wowed them with your new idea, and they would have introduced you to the concept of Intellectual Property rights being a set of tools. If you missed this, then have a look at our previous article in this series. Now, you would be getting into the nitty-gritty of what makes a patent patentable and what timelines you can expect.

The three pillars

Here is the second concept that you need to know about patents: being registered rights, the underlying inventions need to meet some fairly specific legal standards before they can be patented. The most fundamental of these standards are the so-called three pillars of patentability.

The first pillar is industrial applicability. This is usually a given: if your invention has commercial merit, then it is generally industrially applicable.

The second pillar is novelty. This is where you take the invention, break it down into its most important parts, steps or processes (the so-called essential integers) and compare it with one publicly-available document or commercial product that predates the invention. This “prior art” is taken from any time (and any place) before the date of filing your patent application. It can include things that you yourself published (perhaps on your social media) and any patent applications (even if they have not yet been published) with earlier priority dates than the invention. However, some seemingly public information (like non-commercial testing in South Africa) does not count as a disclosure. If you are worried about whether a particular disclosure counts, your patent attorney can advise on specific cases.

The third pillar, known as inventiveness (or non-obviousness), is perhaps the trickiest to ascertain. Inventiveness differs a bit from place to place (and even technology to technology) but generally, centres around an imaginary person “skilled in the art”. This person is skilled in the technical field of the invention and has access to all of the publicly-available prior art, but has no imagination or creativity of their own. The skilled person is free to “mosaic” the prior art – putting bits and pieces together like a puzzle to form the invention. They can also perform “routine” experiments that every person who is also skilled would do as a matter of course. Then, once this skilled person has been constructed, they are provided with the inventive step that the invention has taken beyond the existing state of the art and asked if they would consider it to be obvious in light of their mosaic of the prior art.

From the above, it should be immediately apparent that inventiveness is a profoundly subjective exercise. In South Africa, at least, only a few patents have ever been revoked solely due to a lack of inventiveness.

Moving beyond the three pillars

South Africa, like many jurisdictions, also has specific exclusions on what can and cannot be patented. These exclusions are the subject of an entire discussion in and of themselves, but they exist and can make patenting apps, business ideas, games, methods of diagnosis, plants and animals more complex than patenting a better mousetrap. Again, your patent attorney can advise further if your idea or invention touches on any of these exclusions.

Timelines and the train analogy

At some point in the discussion about your invention, you will most likely be informed that a successful patent ring (meaning a group of patents in many different jurisdictions derived from one original application) is an expensive, complex and time-consuming beast to produce. Unfortunately, there is no such thing as a “worldwide” patent, so you would need to file corresponding applications in a bunch of different markets.

Thankfully, we have international agreements that allow a 12-month window to file these applications, starting from the so-called priority date when the first patent application in the ring or family is founded. This is usually a South African provisional patent application for South Africans, although other options are available and have their own advantages and disadvantages. There is also the so-called PCT patent application process, which provides an examination report and an effective 18 or 19-month extension to go into other countries, and which incurs a high extra cost.

From there, the process is a bit like getting on a train: once you step on, you’re stuck on the ride until the next stop, where you can decide on which way to go next or even whether to continue with the journey. This means that the life of the application is ruled by timelines (first the 12-month initial period, and then subsequent specified periods of application, examination and response that differ from country to country). Sometimes these timelines can be extended (usually by paying a fee), and sometimes they are final deadlines that cannot be bargained with.

Ultimately, the patent process can take anything from a year or two (in some jurisdictions), to a decade or more (in others) to run to completion. Even after grant, the patent will need to be kept alive by periodic renewal payments. South Africa is currently one of the most benign jurisdictions to file in, as a granted patent can be had within 12 months (or even sooner if expedited grant is requested), the filing costs are low, and the renewal period is regular and cheap.

In the final part, we’ll cover costs, other forms of IP, and taking the first steps.

Article sourced from KISCH IP.

See also:

• How to patent an idea in South Africa in three parts: Part one
• Intellectual property protection in South Africa
• Patent law for beginners
• Protecting your IP – Think outside the box but make sure the box is locked

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)