In this feature, Spoor & Fisher partner Lance Abramson expands on the trends he has witnessed in the South African IP sector to date and predictions for how the patent scene will develop from summer 2023 onwards.
South African patent law is a most exciting area of law to be practising in during 2023, with a number of dynamic changes lying in the road ahead.
As a starting point and to set the scene: in order to obtain patent protection for an invention in South Africa, the invention needs to be globally new and inventive, which is a requirement for patents in all countries around the world. In legal terms, ‘new’ means that the invention cannot have been made available to the public anywhere in the world and in any way. This includes a public disclosure by written or oral description or use of the invention.
‘Inventive’, in short, means that the difference between the current invention and what is globally available cannot be an obvious difference. Put another way, the invention needs to be not just different but inventively different from what is currently globally available.
In addition to the new and inventive requirement, South African patent law has some exclusions on what can be patented which is also in line with other countries around the world. For example, business methods, mathematical methods and scientific theories are some of the categories that cannot be patented.
A South African patent is obtained by filing a patent application at the South African Patent Office which needs to meet the legal requirements set out in the South African Patent Act and Regulations, some of which are mentioned above.
There is, however, one crucial difference between South African patent applications and patent applications filed in other countries, in that South African patent applications are not examined at the time of filing. As long as all the formalities are completed and the correct fees paid the application will proceed to grant as filed. Only if the granted patent is later challenged or an attempt is made to enforce the granted patent will the courts at that point investigate if the granted patent is valid.
South African patent law is a most exciting area of law to be practising in during 2023, with a number of dynamic changes lying in the road ahead.
This is in contrast to other countries, which have an examination system in which an examiner is assigned to each patent application after filing. The examiner will review the patent application to confirm that the subject matter is appropriate for a patent and that all regulatory requirements have been met, and will then conduct a search and issue an opinion as to whether the described invention is new and inventive or not.
However, the position in South Africa is changing! On 23 May 2018, the South African Cabinet approved the Intellectual Property (IP) Policy of South Africa which proposes, inter alia, the introduction of Substantive Search and Examination (SSE) of patent applications in South Africa. Under this new system, the Patent Office (CIPC) will examine patent applications to determine whether the applications meet the formal and substantive patentability requirements.
In preparation for the proposed patent regime, the Patent Office has already recruited patent examiners who were trained on search and examination by representatives of the European Patent Office (EPO).
The next step of the training started in 2021, which is an experiential learning component in the form of an unofficial search and examination trial period. During this trial period, substantive search and examination of patent applications is carried out and these are sent to patent attorneys who review and respond to the findings. During this phase, the reports will not be legally binding and will not form part of the official application files.
SSE can only officially be implemented once the current South African Patents Act and its regulations are amended to allow for the legislative framework to introduce SSE. The draft of the amendments has not yet been published for public comment, and we do not have any indication as to when the draft will be published. Furthermore, the process of passing a bill, and signing it into law by the South African president, is a lengthy process. However, change is certainly in the air!
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Another interesting area of change of course relates to the rapid development of AI and its impact on practising patent law. One example of this has already occurred where a patent application was filed in a number of countries around the world for an invention autonomously generated by an artificial intelligence, referred to as Dabus (Device for the Autonomous Bootstrapping of Unified Sentience). The challenge has been to determine who should be cited as the inventor (Dabus or its creator) and who owns the invention.
Most patent offices have decided that AI systems cannot be cited as inventors. In South Africa, as there is no examination, as discussed above, the patent application filed here proceeded to grant as South African patent no 2021/03242. It remains to be seen what our courts would hold if this patent was ever challenged or an attempt is made to enforce the granted patent. It is likely, in our view, that the courts would find Dabus was incorrectly cited.
A similar question arises as to who owns the copyright in the work produced by, for example, ChatGPT, and much has already been written about this question in law which has not yet been resolved. There are three possibilities: that the copyright vests in the AI, in the programmer of the AI or in the person that uses the AI to generate the work.
AI tools will most certainly profoundly impact the legal profession. AI tools are already being used to automate drafting tasks currently done by attorneys. This provides efficiency benefits to attorneys and their clients. In the field of patent law, there are already AI tools which can assist a patent attorney to draft and file patent applications, although these tools are not yet ubiquitous.
It is certainly not far away that AI tools will be available to assist patent examiners with the patent examination process described above. Indeed, there are potential opportunities and challenges that AI presents and will present for inventors, patent attorneys and other stakeholders in the patent system.
Most patent offices have decided that AI systems cannot be cited as inventors.
A further area of interesting and rapid development is the digitally immersive world known as the metaverse and its ramifications for IP – including patents. There has been an enormous growth of patent applications which relate to virtual reality technologies in the past five years. These patents relate, for example, to systems for generating and interacting with a virtual reality environment, systems for managing ephemeral locations in a virtual universe and other virtual reality and augmented reality technologies.
Another interesting angle to consider at the intersection of the metaverse and patents is the use of NFTs (non-fungible tokens) to represents patents in the metaverse. For example, the ownership of the patent can be captured and certified in an NFT, which would certify not only who the current owner of the patent is but would also capture, in a way that could not be tampered with, the historical chain of ownership of the patent, for example. This could lead to a huge cost reduction when recording assignments of patents at various patent offices around the world, which is a tedious and costly exercise. Already, IBM and IPwe have teamed up to create the infrastructure for an NFT-based patent marketplace.
For a South African patent attorney, 2023 represents an exciting time to be practising law – the introduction of patent examination, the rise of AI and the metaverse will mean our world in the months and years ahead will be vastly different from what lies behind us. As with all things, this dynamic change brings opportunity to those who are willing to adapt and leverage. At over 100 years old, the law firm Spoor & Fisher clearly have adaptation as part of our DNA and look forward to harnessing all of these changes for the better of our team and clients!
Lance Abramson, Partner
11 Byls Bridge Boulevard, Building No. 14, Highveld Ext 73, Centurion, Pretoria, 0046, South Africa
Tel: +27 11 994 5111
Lance Abramson is a patent attorney and an Attorney of the High Court of South Africa. With more than two decades of experience, Lance brings expertise in the filing of applications in the electric, electronic, software and nanotechnology fields and related litigation. His practice focuses primarily on domestic and international patent and design matters.
Spoor & Fisher is a pan-African IP law firm with over 100 years of history that prides itself on its ability to handle the intricacies involved in registering and enforcing IP in every African country. Its teams comprise specialists in trade marks, patents, copyright, anti-counterfeiting, registered designs, commercial IP, IP audits and all other aspects of IP law.
