Lance Abramson, a partner at Spoor & Fisher, discusses the trends he’s seen in the South African patent sector and his predictions on how it will evolve from summer 2023.
South African Patent Law is an exciting area to practice in in 2023. A number of dynamic changes lie ahead.
To set the stage and as a starting point, in order to receive patent protection in South Africa for an invention, it must be new and inventive globally, which is the requirement for patents around the globe. Legally, “new” means that the invention has not been made public in any form or anywhere around the globe. It includes any public disclosure of the invention, whether it is through a written or verbal description or its use.
“Inventive” means, simply, that the difference between what is currently available and the invention cannot be obvious. Alternatively, the invention must be inventively different than what is currently available globally.
South African law also has some limitations on what can be patent, which are in line with the laws of other countries. Business methods, mathematical techniques and scientific theories, for example, are excluded from patentability.
The South African Patent Office will grant a South African Patent if the patent application meets the legal requirements outlined in the South African Patent Act and Regulations. Some of these are listed above.
South African applications for patents are different from those filed in other countries in that they do not undergo examination at the time of filing. The application will be granted as long as the required formalities and fees are met. The courts will only investigate the validity of a granted patent if it is challenged later or if an attempt is made at enforcement.
South African Patent Law is an exciting area to practice in in 2023. A number of dynamic changes lie ahead.
In contrast, other countries have an exam system where an examiner is assigned for each patent application upon filing. The examiner will first review the application to ensure that it is suitable for a patent, that all requirements are met and then perform a search to determine whether or not the invention described is novel and inventive.
The situation in South Africa has changed! The South African Cabinet approved its Intellectual Property Policy on 23 May 2018. This policy proposes the introduction of Substantive Search and Examination of South African patent applications. This new system will see the Patent Office (CIPC), examine patent applications in order to determine if they meet formal and substantive requirements for patentability.
The Patent Office has already begun recruiting patent examiners, who have been trained by EPO representatives in search and examination.
In 2021, the next phase of training began with an unofficial trial period of search and examination. This is a component of experiential learning. During the trial period, patent applications are subjected to a substantive search and examination. These patent applications are then sent to patent lawyers who will review and comment on their findings. The reports are not legally binding during this period and do not form part the official files.
SSE cannot be officially implemented until the South African Patents Act, and its regulations, are amended in order to create the legal framework for SSE. We do not know when the amendments will be published. The process of signing a law into law and passing a bill by the South African President is also a long one. Change is in the air, however!
A second area that is changing rapidly is the impact of AI on patent law. This has happened in the past, where an application for a patent was filed around the globe for a Dabus invention (Device For the Autonomous Bootstrapping Of Unified Sentience), which is an autonomously generated invention by artificial intelligence. It has been difficult to determine whether Dabus or its creator should be named as the inventor and who is the owner of the invention.
The majority of patent offices have ruled that AI systems are not inventors. As discussed above, there was no examination in South Africa and the patent application submitted here went on to be granted as South African Patent No 2021/03242. We will have to wait and see what our courts decide if the patent is ever challenged, or if an attempt to enforce it is made. In our opinion, the courts are likely to find that Dabus was cited incorrectly.
This question has been raised in law and has yet to be resolved. The copyright could vest in either the AI, the AI programmer or the person who uses the AI to create the work.
AI tools will have a profound impact on the legal profession. AI tools have already been used to automate tasks that are currently performed by attorneys. It is a win-win situation for attorneys and clients. AI tools can already be used by patent attorneys to help them draft and file applications. However, these tools are still not widely available.
In the near future, AI tools will assist patent examiners in the above described patent examination process. AI will and can present both opportunities and challenges for inventors, attorneys, and other parties involved in the patent system.
The majority of patent offices have decided AI systems can’t be cited as innovators.
The digitally immersive metaverse, and its implications for IP, including patents, is another area that has seen rapid growth. In the last five years, there has been a huge increase in patent applications that relate to virtual-reality technologies. These patents include, for instance, systems that generate and interact with virtual reality environments, systems to manage ephemeral places in a digital universe, and other virtual and augmented technology.
NFTs are a non-fungible token that can be used to represent patents within the metaverse. This is an interesting aspect to consider. In an NFT for example, you can capture and certify the ownership of a patent. This would not only certify who the current patent owner is, but also the history of ownership in a way which could not be altered. This would reduce the cost of recording patent assignments at different patent offices across the globe, which can be a time-consuming and expensive process. IBM and IPwe already have teamed up in order to create an NFT-based Patent Marketplace.
A South African patent lawyer will find 2023 to be an exciting year for practicing law. The introduction of patent examinations, the rise in AI, and the metaverse, will make our world very different than it was before. This dynamic change, as with everything else, brings opportunities to those who will adapt and leverage. Spoor & Fisher, a law firm with over 100 years of experience, has adapted to change and looks forward to leveraging all these changes for our team and our clients.
Lance Abramson as Partner
Building No. 11 Byls Bridge Boulevard Highveld Ext. 73, Centurion Pretoria 0046 South Africa
Tel: +27 11 994 5111
Lance Abramson has been a Patent Attorney and an attorney of the High Court of South Africa for over two decades. Lance Abramson has more than 20 years of experience in filing applications and litigation in the fields of electric, electronic and software technology, as well as nanotechnology. His practice is primarily focused on domestic and foreign patent and design issues.
Spoor and Fisher, a pan-African IP firm with a history of over 100 years, is proud to be able to handle all the complexities involved in registering IP in each African country. Its teams are made up of specialists in IP law, including trade marks, copyrights, anti-counterfeiting laws, registered designs, commercial IP and IP audits.