The balancing act of patentability

Sections 25(2) and (3) of the Patents Act 57 of 1978 explained.

Patented inventions can be very lucrative and the importance of the role that patents play in commerce is ever-increasing. Referring to a sale of 925 patents by AOL to Microsoft in 2012 for $1.05 billion, the New York Times wrote: “The lofty price...reflects the crucial role that patents are increasingly playing in the business and legal strategies of the world’s major technology companies...”. It is, however, true that patents, especially initially during a time when the financial gains cannot yet be realised, have adverse cost implications to proprietors, with individuals often opting not to patent an invention due to the financial burden involved. There are numerous hurdles to overcome before a patent is granted in an examining country and it is therefore crucial for an applicant or investor to establish that the invention is actually patentable.

Section 25 of the Patents Act 57 of 1978 prescribes the requirements for patentability in South Africa with the  intrinsic requirements for patentability being “absolute novelty and inventiveness”. In addition, certain types of inventions are not deemed “inventions” in terms of the Act and are therefore not patentable. This is called the extrinsic requirements of patentability, which are listed in Section 25(2) and include discoveries (such as an isolated strain of microorganism without asserted utility), scientific theories, mathematical methods, literary, dramatic, musical or artistic works, or any other aesthetic creation, schemes, rules or methods for performing a mental act, playing a game or doing business, programs for computers and the presentation of information.

When evaluating the extrinsic patentability of an invention, it is important to read Section 25(2) as qualified by Section 25(3). Section 25(3) states that Section 25(2) shall only prevent, to the extent to which the patent or application for a patent relates to that thing as such, anything from being deemed an invention for the purposes of the Act. This provision has been included in the Act to limit the scope of the limitations introduced by Section 25(2), but certainly not to open a back door to undermine Section 25(2), and construing this section to this effect will be in vain.

A computer program as mentioned in S25(2) will be used as an example. The rationale behind the exclusion of computer programs in S25(2) lies in the fact that the Copyright Act 98 of 1978 already affords protection to computer programs. This is, however, limited to the source code of such a computer program and not the effect that the computer program achieves. Interpreting the exclusion of a computer program’s patentability under S25(2) in the light of S25(3), it is evident that only a computer program as such is excluded. If the effect achieved by the computer program is of a “technical nature”, the claimed invention relates to the effect achieved rather than the computer program behind the effect, and therefore the invention should be patentable. The term “technical effect” has not yet been defined by the South African Courts, but it is likely that the European model will be persuasive in this regard. In Europe, control of industrial processes, increased efficiency or security of processes and even certain mathematical methods when brought about by a computer program, will be construed as systems achieving a “technical effect” and these should, subject to all other intrinsic and extrinsic requirements, be patentable.

Another example can be found in a musical work, which again, is prohibited under S25(2). An invention that enables the reproduction of a musical work in a new and inventive way, such as a new configuration of the groove on a vinyl plate that allows the reproduction of stereo sound, or more recently, Bluetooth operated speakers, are not musical works as such, even though they facilitate the reproduction thereof. Here section 25(3) ensures that these inventions’ relation to the prohibited invention does not deem it non-patentable under S25(2). An aesthetic creation (a photograph) is not patentable, but an apparatus for producing an aesthetic creation (a camera) is not excluded from patentability.

Patent laws are relatively slow to adapt to the rapid development of technology. Whilst waiting for patent law reform, the limitations set out herein have to be respected and an attempt to circumvent them through patent acrobatics could lead to costly failures in court. Prior to investing large sums of money in a patent, it is therefore important for an inventor to ensure that his invention will survive the scrutiny of S25(2) as qualified by S25(3).