In our earlier articles, we discussed various aspects of patent protection, including how a patent can be obtained and what the requirements for valid patent protection are. We now discuss the rights that are conferred by a granted patent, and how these rights may find application to the advantage of the patentee.
As emphasized previously, patent protection is territorial in nature. This means that patent rights that are conferred on a patentee of a granted patent apply only in the territory in which the patent has been granted. In other words, a South African patent only has legal effect in South Africa, which is also the territory with which this article deals. This must continuously be borne in mind when considering the effect of a patent.
What must also be borne in mind is that only a granted patent confers enforceable rights. A pending patent application and a provisional patent application do not confer any enforceable rights. Patent applicants must therefore exercise caution not to misrepresent or misunderstand their position as proprietors of pending provisional or complete patent applications. During pendency, applicants have no enforceable rights.
So, what rights does a granted patent confer on a patentee? The central provision of the South African Patents Act that answers this question is Section 45, which provides that the patentee of a granted patent has, for the 20 year duration of the patent and subject to the payment of annual renewal fees, the right to exclude all other persons from making, using, exercising, disposing or offering to dispose of, or importing the patented invention in or into South Africa. Thus, any person who makes the patented invention in South Africa, uses the patented invention in South Africa, exercises the patented invention in South Africa, disposes of the patented invention in South Africa, offers to dispose of the patented invention in South Africa, or imports the patented invention into South Africa, would fall foul of the patentee’s rights.
Some comments on the rights referred to above are necessary:
- Firstly, the question often arises whether or not patent protection must be pursued in, for example, China, on the basis of prospective or existing patent applicants’ anecdotal view that cheap imports from abroad may erode their commercial position in South Africa. While, in this example, patent protection in China may be valuable from this perspective, it will be appreciated that a commercial position in South African can be defended against imports on the basis of a South African patent, taking into account the abovementioned right to exclude all others from importing the patented invention into South Africa.
- Secondly, the term ‘to enforce’ must be heeded, since it provides that it is the patentee’s responsibility to enforce his patent rights. No ‘patent police force’ would do it on his behalf. To fall foul of the rights granted by a patent is not a criminal offence.
- Thirdly, the term ‘patented invention’ must also be heeded, since the patentee’s rights exist only in respect of the invention as it is defined in the claims of the patent specification of a granted patent. Too often patentees have an incorrect impression of the scope of their rights, thereby being at risk of, for example, misrepresenting their position or taking commercial risks not backed by their patent.
The manner in which the abovementioned rights that are conferred by a patent may be used by the patentee to its advantage are extensive, and may differ from case to case. For example, as has already been alluded to, a granted patent may allow a patentee to establish a commercial position and, later, to defend that commercial position by excluding competitors from the market. In addition, a patent may allow the patentee to expand a commercial position by licensing competitors to exploit the invention, subject to the payment of royalties. This may be applicable, for example, if the patentee is not able to meet market demand. Still further, if the patentee does not wish to incur capital expenditure in order to commercialise the invention, the patentee’s patent rights may be licenced to a party that is better placed to commercialise the invention, both to the advantage of that party and to the advantage of the patentee.
Bear in mind that the strength of the abovementioned rights are, especially in South Africa (in which patents are not examined for patentability of the inventions to which they are directed), always subject to the patentability of the invention inter alia.
It is therefore clear that a patent can be an extremely valuable commercial tool, and one that innovators can rarely afford to be without.