South Africa: Second Opinion On Patentability And Protection

Last Updated: 23 September 2019
Article by KISCH IP

Patients often go for second medical opinions, especially when the diagnosis is bad news. The same should go for patentability as well, but inventors often take the first diagnosis to patentability and protection of their invention as the final truth.

You have an invention and would like to find out whether it is patentable or not. You approach a patent attorney – often the cheapest one – for an opinion. You provide a short overview of the invention and a novelty search is conducted. The search results show that your invention is not new, so the recommendation is that you should not file a patent application. This is often the stage where inventors abandon their invention, or at least abandon the prospects of protecting it.

And this is where many inventors go wrong!

We recently had a case where an inventor provided us with a novelty opinion, conducted by a third party, which cited a number of seemingly relevant patent publications along with the recommendation that no patent application be filed for the invention. We did, however, consider the aspects of the invention in more detail and found a number of potential features that could be worth protecting. Subsequent to that, a South African provisional patent application was filed, followed by a PCT International application and a number of national phase applications. (It also turned out that the features of the invention were found novel and inventive by the PCT examiner!) We also investigated other forms of protection which resulted in a number of industrial design applications that have all proceeded to grant.

Once the applications were filed, the inventors presented and sold the technology and relevant intellectual property rights to a company for a handsome amount. In addition, the inventors concluded an agreement with the company to provide consultation services towards research, development, testing, manufacture, marketing and distribution of the technology. In consideration of these services, the inventors will receive a royalty on net sales revenue received on the sales of the technology for the full term of any patent or 10 years even if no patent is issued.

Needless to say, this would not have been possible if the inventors did not have the patent and design applications filed. Or to put it frankly: the inventors would have nothing if they did not go for the second opinion on the protection of the invention.

The above case is a prime example of why inventors should carefully consider each invention in detail and reconsider protection even if, at first, it appears that no protection is available. Inventors should also consider other forms of protection, such as industrial designs and the like, before simply abandoning the invention.

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.

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