South Africa: To Publish Or Not To Publish, That Is The Question

Last Updated: 24 April 2012
Article by Joanne Van Harmelen

We are all familiar with the old academic adage, "publish or perish", but when commercialisable research outputs have associated potential intellectual property, any published or presented outputs from the research prior to filing patent applications can result in a minefield for the patent applicant.

There are two important intrinsic requirements for obtaining a patent for an invention in most countries in the world, the first is that the invention must be new and the second is that the invention must be inventive or non-obvious.  In order to be new, an invention cannot have been made  available to the public anywhere, in any way, whether by publication, presentation, use, sale, and the like.  In order to be inventive, an invention cannot be considered an obvious step forward on what was already known to skilled persons in the relevant technology field.

However, when considering novelty and inventiveness, a key factor set out in the patent law and practice of many countries is that there must have been an "enabling disclosure" in the prior art.   This term is referred to in both the United States Patent Office Manual of Patent Examining Procedure (US MPEP) and also in the European Patent Office Guidelines for Examination in the EPO (EPO GE).

This term was taken over from another requirement of patent law, which is that a patent specification must fully, or at least sufficiently, describe an invention.

Specifically, US patent law states that "The specification shall contain a written description and process of making and using it in such full, clear, concise and exact terms as to enable any person skilled in the art to which it pertains or with which it is most nearly connected, to make and use the same...". 

This is essentially equivalent to the South African Patents Act Section 32 (3)(b) which provides that a "complete specification shall...  sufficiently describe, ascertain, and where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such an invention...".

As in the test for the novelty and inventiveness of an invention, the question is asked whether a piece of prior art, such as a publication, presentation, or use, etc. provides enough information to the public, as to be an enabling disclosure which will destroy the novelty or inventiveness of the invention.

It is therefore important to understand what this term "enabling disclosure" means.

In the US, the approach to be used by examiners is set out in the MPEP.  As a starting point, it is presumed that any piece of prior art  that expressly contains or makes obvious all of the elements of the claimed invention is enabling and it is up to the patent applicant to provide facts that will persuade the examiner that this is not the case.  It is also not necessary for the prior art to have proven efficacy in order to be enabling, there need merely be sufficient detail provided to allow a person of ordinary skill in the field to carry out the invention which is being claimed. 

However, the mere naming or description of the subject matter of the invention in the prior art is not sufficient to be enabling if additional "undue experimentation" would be required by a person in order to produce the invention being claimed.  

Also, if the prior art merely discloses a structure of a claimed compound, then if the patent applicant can provide evidence that shows that attempts to prepare that compound were unsuccessful prior to the date of the invention, this is enough to show inoperability and the prior art will not be considered to be enabling. 

The EPO GE contains similar guidance that merely naming a compound in a piece of prior art is not sufficient unless it is also known how to prepare and/or separate the compound. 

Furthermore, US examiners can consider what knowledge the public possesses before the date of the invention being claimed and consider whether a person with ordinary skill in the field would be able to combine their knowledge with the information described in the prior art to make the invention being claimed.  Again, the EPO GE has similar guidance that a combination of the general knowledge of a skilled person together with the disclosed subject matter at the time of making the invention is enough to provide enabling disclosure.  Evidence of this knowledge can be in the form of publications or patents that are available to the public.

The US guidelines indicate that an examiner may also make use of illustrations and pictures as enabling disclosures, as long as each claimed structural feature and how these are put together are provided in the illustrations/pictures.

The UK Patent Office also provides useful guidelines for patent examination, including references to relevant case law, which deal with enabling disclosure that may be persuasive to South African courts during revocation proceedings.  In the UK, the guidelines have set out that there are two requirements for an invention to be anticipated by a piece of prior art.  The first is that there must have been prior disclosure and the second is that there must be enablement, and these are two separate and distinct concepts that have their own rules.

Firstly, for there to be prior disclosure, the prior art must disclose subject matter that, if performed, would necessarily result in infringement of the patent in question, were it to be granted.  Another way to put this is that if a prior art experiment, on more than 99 % of the occasions on which it is conducted, would reliably produce a particular result, then this can be considered as "inevitably" leading to the result in question and there would then be prior disclosure.  When considering whether there has been prior disclosure, it is also permitted to consider the general knowledge of a person skilled in the field in combination with the prior art to determine whether each of the features of the claim under consideration have been disclosed.

Secondly, once it has been established that the prior art satisfies the requirement of prior disclosure, for there to be enablement, it must be possible for the ordinary skilled person to be able to perform the subject matter of the invention prior to the patent having been applied for.  In other words, the test set out for enablement mirrors the test for sufficiency of disclosure in a patent description.

UK law also provides that if it is clear from contemporaneous evidence that the literal disclosure of a document is erroneous, then this disclosure is not part of the state of the art.

There is not much case law in South Africa dealing with enabling disclosure.  Two cases seem most relevant, Elan Transdermal Ltd v Ceiba Geigy (Pty) Ltd 1994 and Bromine Compounds Ltd v Buckman Laboratories (Pty) Ltd 2006.  In the Elan Transdermal case, Judge MacArthur referred to English case law, and indicated that on the assumption that the principle of enabling disclosure  contained in English law is also part of South African law, unless a method of putting an earlier document into operation was self-evident, it will not be treated as anticipation.  It therefore appears that the English law cases and guidelines regarding enabling disclosure will be applicable to South African law. 

There is an even briefer mention of enabling disclosure in the Bromine Compounds case where the judge indicates that plaintiff's counsel argued that disclosure in the prior publication must be an enabling disclosure, i.e. it must be sufficient for the practical working and real utility of the alleged invention.  However, the judge went on to say that it was not necessary in the present case to determine whether the disclosure in question had been enabling.

Despite the lack of guidance in South African law, given the probability that UK patent law and guidelines will be persuasive to a South African court, as would case law from other countries such as the US and EPO members, an inventor needs to consider the possibility of whether prior publications and presentations may be considered to contain sufficient details to be enabling  and therefore to anticipate a subsequent invention.  When this is done, the inventor must not only consider their own work, but also the common knowledge of a person in their field and other publications, presentations or uses that are already known to the public. 

So for academics involved in applied research, perhaps the old adage should be updated to "patent, then publish or perish".

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions