South Africa: Five commonly misunderstood patent concepts
OUR PATENT system serves to reward an inventor or patent holder with a limited monopoly, in exchange for the disclosure of the invention. However, aspects of patent law are often misunderstood by inventors and applicants.
An application is not an enforceable right
Obtaining a patent starts with the filing of a provisional application. A complete patent application is then filed, which matures into a granted patent. Until a patent is granted, the applicant is merely the proprietor of a pending patent application.
There is no such thing as a provisional patent
A provisional patent application serves only to secure an early filing date for the invention. Any public disclosure before the date counts against the invention. A complete application needs be filed before the provisional application expires, which is in a year.
There is also the option of filing a Patent Co-operation Treaty application. It will claim priority from the provisional application, whose filing date is then considered to be the filing date of the subsequent application.
There is no such thing as an international patent
A patent is a territorial right. If patent protection is desired in a certain country, a patent application is required to be filed in that country.
However, there is such a thing as an international patent application, known as a PCT application. A PCT application does not result in an enforceable patent but preserves the right for the applicant to file corresponding patent applications in many countries. There are many advantages of filing a PCT application. One is that a substantive search is conducted which gives an early indication of the novelty and inventiveness of the invention, before having to file a separate patent application in many different countries.
A product protected by a patent does not have to be marked as such
It is not a requirement in South Africa to mark a patented article. Entrepreneurs should assess the potential patent landscape before deciding to copy a product. A disadvantage of not marking an article as patented is that competitors are not informed of the patent’s existence, which limits the eventual calculation of damages should the patent become the subject of infringement proceedings.
Having a patent does not grant the patent holder the freedom to operate
A freedom to operate analysis is the determination of whether a particular action, for example manufacturing or selling a product, can be done without infringing the patent of another party.
The fact that a patent holder has a patent for an invention does not mean that they will automatically have the right to make, use or sell that invention. It is possible to obtain a patent for an invention that is new and inventive, but with the invention falling within the scope of protection of a broader, pre-existing patent. For example, if a patent claims protection for the combination of features A, B and C, a person will infringe this patent if their actions include all the features. Although the addition of feature D might constitute a patentable invention, the combination of A, B, C and D will amount to the infringement of the prior patent.
Without doing the correct homework, entering the market with a “new” or patented product could end up being a costly exercise. Huge costs are involved with implementing, manufacturing and distribution of the products, which could be all for nil should the product or article fall within the scope of an existing patent.