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We dance round in a ring and suppose, but the secret sits in the middle and knows – Robert Frost, The Secret Sits.

What does the internet, karaoke machines and matches have in common? Though revolutionary in their own right, none of these inventions were ever patented prior to being released to the public.

It is common knowledge that matter made available to the public is no longer patentable. But what happens if a person, ignorant of the patentability of an invention, starts using the invention without making it publically available? An example of this can be found when an orthopaedic surgeon invents a tool to aid during surgery or when a farmer invents a new implement to aid during his agricultural activity.

Section 25(8) of the Patents Act No. 57 of 1978 states that an invention used secretly and on a commercial scale within the Republic shall form part of the state of the art in respect of that invention. This means that neither the inventor nor a third party will ever be granted a patent on the subject matter of the invention. The inventor will also not be able to stop any third party from exploiting it and his spoils will be confined to his personal exploitation thereof.

Costs surrounding patents can be profound, and an inventor might want to test and refine his concept prior to patenting it. S25(8) makes provision for this in that it specifically states that the working of the invention must be on a commercial scale before it will become part of the state of the art. This thus makes provision for a so called “reasonable technical trial and experimenting” exclusion, which is confirmed in S26(b).

The interpretation of the word “secret use” found in S25(8) was confirmed in the English case of Bristol-Myers Co (Johnston’s) Application, 1975 RPC 12, to include the intentional concealing by the user. The test to be applied is an objective one. In Strachan and Henshaw Ltd v Pakcel Ltd (1949) 66 RPC 49, it was stated that the nature of the invention and the circumstances of the case would be indicative of whether the use was on a commercial scale. In Fomento Industrial SA and Others v Mentmore Manufacturing Co Ltd 1956 RPC 87 it was stated that even a gift of a sample would ordinarily be construed as an act on a commercial scale.

It is thus absolutely critical that any technical trial or experiment be conducted for the sole purpose of refining the invention and not to gain any market share or commercial advantage from it.

So, what should you do if you have an invention that might be potentially lucrative? In South Africa, a provisional patent application is a relatively cost efficient method of securing a priority date, after which no act, whether on a commercial scale, as a disclosure or anything else, will be construed as novelty invalidating use of the invention. Through the Paris Convention, the inventor will also receive an additional year to acquire funding needed to file the patent internationally.

So, the next time you have a breakthrough idea, why not consult your patent attorney in order to establish a priority date prior to implementing the invention, to ensure that your future options in terms of patentability remains viable.

At van Rooy

Patent Attorney
Head: Patent Department &
Chair: Executive Committee
Tel +27 10 510 1777

Louw Steyn

Patent Attorney
Tel 011 324 3152

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