Intellectual Property refers to the creations of the human mind and has been increasingly recognised through the years for the value it brings to the development and growth of society. Intellectual Property laws encourage the continued growth and contributions of Intellectual Property by providing the creators protection for their intellectual creations.

There are several Intellectual Property laws for protecting various Intellectual Property, such as Patents, Designs, Trade Marks, and Copyright. Each Intellectual Property law defines the requirements for obtaining protection and exclusions from protection. For example, in the Republic of South Africa, the South African Patents Act 57 of 1978 ('Patents Act') mentions specific subject matter that is not patentable. 

The basic requirements for patentability is that an invention must be: new in that it must not be disclosed to the public in South Africa or internationally in any form (e.g. oral or written form or use); inventive in that it must not be obvious to a person skilled in the area of technology of the invention; and it must be capable of being used or applied in trade or industry or agriculture. 

The Patents Act states that the following is not patentable:

• a discovery; 
• a scientific theory; 
• a mathematical method; 
• a literary, dramatic, musical, or artistic work, or any other aesthetic creation; 
• a scheme, rule, or method for performing a mental act, playing a game, or doing business; 
• a program for a computer; 
• the presentation of information; 
• inventions that encourage offensive or immoral behaviour; 
• plant and animal varieties; 
• methods of medical treatment; 
• inventions contrary to natural laws;
• inventions contrary to the law; and 
• certain nuclear energy and materials inventions.                                                                                                       

This is quite a long list, however the exclusions above might not be the end of patentability for an invention. There is a provisio in the Patents Act, which states that the invention is only excluded to the extent to which it relates to the exclusions above. There has been no case law in South Africa to provide guidance on the practical use of the provisio. Other jurisdictions, such as Europe, have similar exclusions to South Africa, and our courts may be influenced by the case law in these countries. The commonality between the jurisdictions is protection can be obtain if the invention contributes a ‘technical character or effect’ having regard to the invention as a whole and does not simply relate to the exclusion itself. 

So why is there a list in the Patents Act excluding particular inventions from patentability? Is there a way to protect inventions that, at first glance, seem to be “upatentable”? Let us have a closer look.

A discovery

A discovery according to the Oxford dictionary, is the action or process of discovering or being discovered. Therefore, it already exists, and it has now been discovered. Examples of discoveries that are unpatentable are: the new hominin species (e.g. Homo naledi); coronavirus disease; and the Higgs boson.

Although these discoveries are not patentable, a new invention related to a discovery could be. For example, a scientist may be able to determine the species based on the DNA from a hominin fossil, and that method of identifying a species based on the analysis of DNA could be patentable. 

A vaccine developed to prevent a new coronavirus disease is patentable. 

The “Higgs boson” is one of the elementary particles that make up the Standard Model of particle physics and is associated with the Higgs field. Although the Higgs boson is not patentable, the “Hadron Collider” which is a particle accelerator that accelerates the speed of particles close to the speed of light, thereby producing massive particles upon collision aimed at predicting different theories of particle physics, is patentable.

A scientific theory

A scientific theory according to the Oxford dictionary, is a coherent group of propositions formulated to explain a group of facts or phenomena in the natural world and repeatedly confirmed through experiments or observation. This ties in with a discovery, but it requires research and experiments to prove the scientific theory. Examples of scientific theories that are unpatentable are: Einstein's theory of gravity; laws of thermodynamics; Newton's law of motion; and string theory. 

Inventions implementing practical use of the scientific theories producing a technical effect are patentable, such as a quadcopter drone which is known as an Unmanned Aerial Vehicles, can have a multitude of embodiments that can be patentable, including being able to be suspended in the air, input controls for flying the drone, collision detection systems and autopilot. 

The James Webb Space Telescope is a space telescope designed to study astronomy and cosmology such as the first galaxies in the universe and is patentable because it improves infrared resolution and sensitivity of the telescope to detect objects that are too old and distant.

A mathematical method

Mathematics according to the Oxford dictionary, is the branch of science concerned with number, quantity and space, i.e. is abstract science. A mathematical method is a formula, i.e., a set of instructions and is linked to a scientific theory. Examples of unpatentable mathematical methods are: statistics; calculus; and trigonometry. 

An invention comprising a mathematical method that contributes to a technical effect is patentable. For example, a quadcopter drone, or James Webb Space Telescope mentioned above is patentable.

A literary, dramatic, musical, or artistic work or any other aesthetic creation 

This form of Intellectual Property is protected by the Copyright Act 98 of 1978 (Copyright Act). For example, books, play, and painting are unpatentable.

Even though the aesthetic creation itself is not patentable, an invention having a technical effect and producing the aesthetic creation is patentable. For example, a 3-D printer prints physical objects such as a sculpture, based on a three-dimensional model, or improvements in musical instruments.

A scheme, rule, or method for performing a mental act, playing a game, or doing business 

A scheme, rule, or method for performing a mental act or playing game relates to steps or methods performed mentally, i.e., in the human mind. For example, methods for playing monopoly, scrabble, and chess are unpatentable.

Board games and their pieces for monopoly, scrabble, or chess are patentable.

A scheme, rule, or method for doing business typically relates to the operational process of a business. For example, a method of increasing client profile by having a client event is unpatentable as there are no technical means and simply involves collecting and analysing information on potential clients, sending invites, and organising a client event.

A patentable method of doing business would be a method that involves a physical object or provides a technical effect, for example, a touchless payment system that improves the payment process by customers.

A program for a computer 

A program for a computer typically refers to the written source code of the program or a method of carrying out steps on the computer, and the Copyright Act protects the source code. For example, written source code for Microsoft Windows, Google search engine, and Apple iTunes are unpatentable

A program for a computer that involves a physical object or provides a technical effect when run on a computer, such as Robotic bees, surgical robots, Global Positioning System, or Bluetooth inventions, are patentable.

The presentation of information 

A presentation of information relates to conveying information, either written or verbal. This form of intellectual Property is protected by the Copyright Act. For example, a set of written instructions to play a game, a PowerPoint presentation, and user manuals are unpatentable.

Even though the presentation of information itself is not patentable, an invention having a technical effect that presents the information is patentable. For example, a Virtual reality generator for displaying information, 16K display resolution, or 3-D display.

Inventions that encourage offensive or immoral behaviour

The Patents Act provides that a patent shall not be granted for an invention, the publication or exploitation of which would be generally expected to encourage offensive or immoral behaviour.
 
The Registrar has a discretion to refuse a patent application if it appears to him/her that the invention could be used to encourage offensive or immoral behaviour, irrespective if it meets the patentability requirements. For example, Examples are the process for cloning humans and genetically modifying human embryos to include or remove a gene associated with a disease, which are also illegal.

Variety of animal or plant or any essentially biological process for the production thereof

The Patents Act provides that a patent shall not be granted for an invention for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process.

The biological process for the production of animals or plants refers to processes that would occur naturally with no technical interference, such as the method of cross-breeding or selective breeding of plants or animals.

A micro-biological process refers to the technical interference by modification on a micro-level. A micro-biological process and its products are patentable. For example, a genetically modified plant is patentable.

Method of treatment of the human or animal body

An invention of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not patentable. The rationale of the exclusion is not to hinder a doctor or veteran from treating patients or animals due to fear of patent infringement.

The Patents Act also provides that an invention consisting of a substance or composition for use in a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body can be patentable, provided that the use of the substance or composition is novel and inventive. Hence protection for the use of a known substance or composition is patentable.

Inventions contrary to natural law

The Patents Act provides that an invention may be refused as it is frivolous on the ground that it claims as an invention anything obviously contrary to well established natural laws. The Registrar has the power to refuse such patent applications. Examples are a perpetual motion machine, and a machine having no input but an output.

Inventions that fall within this category are not patentable.

Inventions contrary to the law

The Patents Act provides that the Registrar has the power to refuse an invention that is contrary to the law. Examples are the process for cloning humans and genetically modifying human embryos to include or remove a gene associated with a disease.

Inventions that fall within this category are not patentable.

Nuclear Energy and material inventions

The Patents Act provides that an invention relating to the production or use of nuclear energy or to the production, processing, or use of nuclear material or restricted matter as defined in section 1 of the Nuclear Energy Act, 1999.

This relates to inventions that will affect the national security of South Africa or goes against the Nuclear Non-Proliferation Treaty or the Safeguards Agreement or in terms of any other agreement of that kind between South Africa and any other state or any international or multinational nuclear agency or institution. Examples are nuclear material for weapons, and nuclear bombs.

On the one hand, the Patents Act has a long list of exclusions to patentability, but on the other hand, there are caveats to most of the exclusions. An invention needs to be thoroughly assessed to better understand its unique and inventive features. It may well be possible to obtain patent protection for an invention that, at a first glance, appears not to be patentable.

Submitted by Spoor & Fisher