HomeBusiness DigestIntellectual Property Perspectives: Patents and patentable subject-matter

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Patents are exclusive monopolistic rights granted by the state or its personification over inventions in any field if human endeavour. By “its personification” here is meant a state institution that is constituted and mandated to process and prosecute patent applications.

 

The rights so granted are for the exploitation of the invention over a limited period of time (usually 20 years from the lodging of the patent application), subject to the payment of prescribed annual maintenance or renewal fees or annuity payments. Failure to timeously honour annuity payments would result in the patent lapsing or losing protection and thus falling into public domain for use by anyone without committing infringement.

Basic theory

Patents are granted in return for the disclosure of the details of an invention so that the public at large would be able to copy the invention upon the lapse of the period of patent protection. Accordingly, upon lodging of the patent application, the patentee is obliged to submit a written specification describing the nature of the invention and how it works. The idea is that this will stimulate increased creativity, which will in turn give impetus and momentum to socio-economic development.

As such, patent protection is premised on the social contract theory that the exclusive monopolistic rights are bestowed upon the patentee in exchange for public disclosure. In this sense, the patent specification is a public document which is open to inspection by any member of the public subject to certain conditions being met. The state therefore assumes the role of custodian of the lodged documentation.

Who is the applicant?

From the internationally harmonised legislative perspective, the inventor or some other person who the inventor has granted the legitimate rights to apply, qualify as applicant. In this case both the inventor and such other person qualify to make an application for the registration a patent. Joint inventors may apply for registration in equal undivided shares unless there is an agreement on some other disposition of their rights.

Disputes over who the applicant is, however, arise where the invention is made during the time one is an employee. This is an unsettled area of the law in many jurisdictions due to lack of specific provisions appropriating rights, save for the prohibition of certain contractual clauses which are considered repugnant to public policy considerations. Among these are assignment to the employer of an employee’s inventions made outside their course and scope of employment, and restrictions to the right of entitlement to employee inventions made after the expiration of their contract of employment.

 

In the absence of specific provisions, the courts elsewhere on the globe have inclined to established common law principles based in contract which proceed on the premise that, in the absence of an agreement to the contrary, and subject to the specified statutory exclusions, an invention made in the course and scope of an employee’s employment belongs to the employer. The rationale being that it is the product for which the employee is hired and paid to perform.

By “course” of employment here is meant during the currency of the contract of employment. Meanwhile “scope” of employment connotes that it is one of the duties of the employee to make the specific invention for the benefit of the employer. In this sense the employee is viewed as a functionary of the employer through whom the invention is held in trust. Under the circumstances in the application for patent grant, the employee would be named as the inventor, and the employer would be named as the proprietor or owner applicant.

Requirement of patentability

Patents protect the unique ideas that are embodied in an invention. In this sense, inventions are an embodiment of ideas that are novel, involve an inventive step and are of industrial applicability. Put succinctly, inventions are new solutions to technical problems, or technical improvements not previously known, whether for productsor processes, in any field of human endeavour, trade or industry. Additionally, to be patentable, the invention must not fall foul of statutory exclusions.

Before we make forays into the novelty, innovation and industrial applicability requirements, it is instructive to explore the nature, scope and rationale of the exclusions to patentability. The following are not statutorily exhaustive, but represent the most common species of excluded inventions:

Methods of treatment

Methods of treatment of the human or animal body, whether by surgery, therapy or diagnosis are considered of significant importance. In view of their need in practice it is considered that medical treatment methods should not be the subject of patent monopoly at the expense of human life. Further, in view of the rapid progress in the medical sciences, it is justifiable to declare this exception as not capable of industrial application. However, the substance, composition or apparatus used in the methods of treatment qualify for patentability, hence are immune to this exception.

Discoveries and the like

Discoveries, scientific theories, mathematical formulas, rules, schemes, and methods of performing mental acts, playing games, doing business and the like are excluded from patentability on grounds that, though these add to the wealth of human knowledge, they are knowledge or creations in the human abstract which, unlike other inventions, are intangible and abstract, thus devoid of the requisite technical qualities and effect. Further, consistent with public policy considerations, these should not constitute the subject of patent monopoly so as to be made freely available for use for the benefit of everyone.

Aesthetic creations

Literary, dramatic, musical or other artistic works, computer programmes and other creations are excluded from patentability not only because they are the subject of other intellectual property rights protection such as copyright and industrial design, but that they fail to meet the technical effect threshold. The exclusion is thus intended to avert undesirable potential overlaps which would otherwise engender distortions in their commercial exploitations. As with discoveries and the like, aesthetic creations are eligible to patentability where they are incorporated into a comprehensive invention to produce a technical effect or become an integral component thereof.

Biological inventions

This ground of patentability covers animal, plant or any essentially biological process. The rationale for exclusion is steeped in immoral or anti-social behaviour that may be associated therewith. The other reason for exclusion, at least for plants, is that they are accorded sui generis(of its own kind) protection under various national laws. As such, the fear is that this may result in potential overlap with patent protection. However, microbiological processes and their products are generally patentable regardless of whether the process leads to the production of animal, plant or inanimate products.

Public order

This concept focuses on inventions, the publication or exploitation of which would be likely to encourage offensive, immoral or anti-social behaviour. The predicament though is that this exception is somewhat vague, uncertain and fluid. This is because notions and attitudes as to what is offensive, immoral or anti-social change in the course of time due to (i) socio-economic dynamics and (ii)  have to be adjusted in accordance with the moral standards and legal norms obtaining in any given territory. That is to say, morality is not a universally uniform phenomenon but varies from jurisdiction to jurisdiction.

 

Pasipanodya is an IP consultant who writes in his own capacity. Feedback on: mobile +263 775053007, or e-mail:henripasi@gmail.com, legacyipchambers@gmail.com

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