Patents are a registrable form of IP. A patent can protect a new product, a new process or a new use of a product. It is an agreement between an inventor and the government of a country in which the invention is patented, in which the inventor agrees to publish the details of the invention, and in return the government agrees to give the inventor exclusivity (or a monopoly) on certain rights relating to the invention for a limited time, typically 20 years from the time of filing the patent application. Patents are territorial – you have protection in the country in which the patent application was filed and subsequently granted. There is no such thing as a “worldwide patent”.
In order to be patentable, an invention must be:
The invention must never have been made public, in any way, e.g. by oral disclosure, use, trial, printed publication in any language, anywhere in the world, before the date on which an application for a patent is filed.
Would someone with good knowledge and experience of the subject, i.e. “a person skilled in the art” think that the invention was obvious when comparing it with what was already known (“the prior art”)?; and
– must have industrial application
be capable of being used in trade, industry and/or agriculture.
If your technology meets the criteria for patentability and shows market potential (hyperlink to commercialisation), we will instruct our patent attorneys to file a provisional patent application (Month 0). The application will be compiled by the patent attorney with your input. It is critical that adequate technical information is provided to the patent attorney, typically in the form of a draft journal paper.
The filing date is called the “priority date”. You may publish your work after this (caveat: 12 months after the filing of the provisional patent, either a Patent Corporation Treaty (PCT) application (if there is an international market) or a South African “complete” application should be filed.At this stage, (a) the invention must be sufficiently developed to be able to adequately support the claims made in the provisional application; and (b) due to the costs of patent prosecution increasing significantly at the 12 month timeline, we at UKZN InQubate prefer to have some industry interest at this point to justify the patent prosecution costs.
If circumstances are such that conditions (a) and (b) do not prevail, then we will consider withdrawing the provisional patent application and evaluate the merits of refiling it at a later stage.Refiling of the provisional patent application would not be possible if you have published as the work would then be public knowledge and fail to meet the novelty requirement for patentability!)
The following is an overview of general timelines for different patent prosecution avenues:
Aside from the above 3 requirements for patentability, as patents have a limited lifetime of 20 years, it is critical that the time of filing the patent application is right, i.e. there must be adequate data to support the claims in the patent application – it should not just be an idea! Patenting is an expensive process. Therefore, at UKZN InQubate, the filing of patent applications are only supported when the invention is based on a clear commercial case.
After filing of a patent application, we regularly assess the commercial potential of your technology alongside the technical developments made through your research project through frequent meetings with you. Where we have found a lack of commercial interest and/or inadequate technical development, we may discontinue the patenting process.