In some instances the most valuable asset a business has is a unique idea or invention that provides it with a differentiator from all competitors. Sometimes the invention is so unique and complex that there is no chance of it being copied and in this regard, such businesses choose to keep the invention a closely-guarded secret. But in other instances, the most sound protection a business can have is that afforded by a patent.
Eben van Wyk, a director at Cliffe Dekker Inc and head of their intellectual property department outlines the benefits that registering a patent can afford a business: “The basic principle of a patent is that in exchange for disclosing your invention to the public you are granted a period of 20 years in which you have exclusive use of that invention. After that period the invention becomes open to the public who can also start to use it.”
A valid patent registration means you can use patent infringement proceedings should anyone try to copy or exploit your invention.
Van Wyk adds, “A patent is also a valuable asset just like any other asset in your business, and can be sold or be used as a form of security.”
But before registering a patent, there are a number of factors to consider, the first of which is cost. “Costs depend on the complexity of a patent and can vary considerably, suffice to say that it is not a cheap process and not all businesses would have the financial means to file and register a patent,” explains van Wyk. It’s also important to bear in mind that your monopoly on the invention will expire after 20 years, a period that is non-extendable. Given this fact, some businesses whose inventions are not easy to copy choose not to file a patent, thereby circumventing the need to ever have to disclose their invention.
“Another factor to consider is that a patent is territorial. If you register a patent in South Africa, you only have protection in South Africa. Someone else could see your product here and freely exploit the idea in another country in which you have not registered the patent,” adds van Wyk. Is there any way to cover all the bases? “Generally speaking you need to register in each and every country but there are exceptions where some umbrella forms of protection such as the PCT (Patent Co-operation Treaty) allow you to file your base patent and then, within a specific time period, extend the patent to other countries that form part of the PCT,” he answers.
Only inventions that are novel and haven’t already been disclosed to the public can be patented. Van Wyk adds: “And it has to be globally novel in order for you to patent it in South Africa even though the patent only protects you in South Africa.” Determining whether your invention is one-of-a-kind in all countries is virtually impossible.
“You can start off by conducting a search but it’s almost impossible to search all countries. The general wisdom is that, if you are the inventor of something you would have a fairly good idea of whether your product is patentable and sufficiently distinguishable from what is out there already,” explains van Wyk.
It’s highly advisable to consult the professional services of a patent lawyer when considering if an invention should be protected. Van Wyk explains why: “A patent specification is an extremely complex document in that it takes something which appears to be very simple and describes it in a very specific technical and legal manner. It’s vital that you include the correct claims and information written in the correct way. And for something that can be such a valuable asset – in some instances the most valuable asset of a business – it makes sense to consult with an expert to find the best possible way to protect that asset.”
When filing a patent application you can choose to file a complete application first or a provisional application, which is valid for one year. “Within that year you must complete the process by filing a complete patent specification. A provisional patent gives you the advantage that within that year you can fine-tune the invention and incorporate it into the complete patent specification,” explains van Wyk. However, it’s very important to note that you cannot include in your final application anything that is substantially different from what you included in your provisional application. This is why it’s wise to consult an expert from the beginning.