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Patents: time to be inventive

Article by Dr Charleen Rupnarain (Associate) – Adams & Adams

A patent is an exclusive right granted by a government that allows the patentee to exclude anyone else from making, using, selling, offering for sale, or importing the patented invention without his permission. In order to be granted these rights, the invention must be new, inventive and have use in trade, industry or agriculture. Having previously discussed the requirement of novelty, this article focuses on the requirement of inventiveness.

It is considerably more difficult to establish if an invention is inventive than it is to establish if it is novel. For an invention to be inventive, it should not be obvious to a person skilled in the art. In determining if it is obvious or not, one first identifies the field to which the invention belongs. One then considers the state of the art in this field that existed immediately before the priority date (date of filing of the patent application) of the invention. The state of the art comprises all matter which has been made available to the public anywhere in the world, by written or oral description, by use or in any other way.

Unlike with the state of the art as discussed when establishing novelty, the state of the art for assessing inventiveness is narrower in scope: the subject matter of an earlier patent application that is not open to public inspection and prior secret use of an invention do not form part of the state of the art when obviousness is assessed. In assessing inventiveness, a number of prior art documents can be considered together at the same time, unlike the assessment for novelty when a single prior art document must disclose the invention.

Next, one identifies if the invention involves a step forward from the state of the art. A court will then decide if a person skilled in the art would consider this step forward to be obvious in light of the state of the art. In other words, the court will investigate whether a person skilled in the art would, after examining the state of the art, have been able to arrive at the invention on his own without the application of inventive skill. If the answer is yes, then the invention is obvious and not inventive. A ‘person skilled in the art’ is a person who is skilled or qualified in the particular field of the invention, and is not a person of exceptional skill or knowledge. Such a person is not imaginative and is not required to have an inventive turn of mind. A court will first hear evidence from experts in the particular field of the invention. In South Africa, only a court can decide if an invention is obvious or not. This is a largely subjective test and one that should not involve hindsight on the court’s part. As discussed in earlier articles, South Africa is currently a non-examining country and a patent application will proceed to grant if all the filing requirements have been met. It is very difficult to assess if an invention is obvious before a patent application is filed. If a third party attacks the validity of a patent in court, it is the court who will decide if the invention is obvious or not. The onus is on the party attacking the validity of the patent, to establish on a balance of probabilities that the patent is invalid as it lacks inventiveness. Therefore, although inventiveness is a requirement for a valid patent in South Africa, it is only when a patent is attacked on these grounds that one will be faced with having to argue that the patent is not obvious. Generally, if an inventor is satisfied that his or her invention has novelty and is at least arguably inventive, the filing of a patent application for the invention may be justified.

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