[By Don MacRobert]

The patent wars in the technology industry are intensifying. Google’s proposed US$12,5bn acquisition of Motorola Mobility is regarded as a defensive move by the search giant to buy up a patent portfolio to protect itself from companies like Apple that are wielding patents as a weapon.

The recent injunction obtained by Apple against Samsung, barring the Korean company from selling some of its products in the European Union, also brings renewed focus onto the system of patent protection. The question is: is SA patent law up to date and capable of handling the explosion in innovation?

The Patents Act in SA will grant a monopoly in respect of an invention which is “new”. This means that it must not have been known, worked, used or described (such as in a trade journal, patent specification or the Internet) anywhere in the world. The tests for obtaining registration are strictly applied.

Patent applicants should be aware that they, too, might destroy the validity of their own patents by embarking on the use of their invention prior to filing the application at the patents office. This is how strict it can become.

However, if one is successful in obtaining a registered patent, this grants the patentee a monopoly for 20 years. The patentee is therefore given the monopoly to make use of or sell his or her invention. Should a third party use that invention, this would constitute an infringement and could be stopped.

This is what happened in connection with Samsung, when Apple claimed that its phones and tablets “slavishly” copied the iPhone and iPad.

There are certain advantages in seeking patent protection in SA. One such advantage is that one can obtain a registration fairly quickly and then be in a position to act against third-party infringers. This is a considerable advantage.

However, there is a serious disadvantage as far as the SA patents system is concerned. It is what is described as being a “non-examining country”. This means there is no official search conducted by the Patent Office in Pretoria to determine whether the patent sought meets the strict requirements of section 25 of the Patents Acts — in that, has the invention been described in any article elsewhere in the world?

The point here is that although an SA patentee can obtain an early patent registration, it would be wise to make sure that it is valid. One can conduct searches to see whether a patent, already granted, is valid in the light of what is disclosed by searching internationally for similar patented inventions.

The results of these searches may make it necessary to narrow down, or limit to a certain extent, the scope of the patent already granted in SA in order to make sure that it continues to be valid and does not include or cover material or inventions of third parties.

However, with the pace of innovation in the technology sector accelerating, especially in the field of mobile telephony, it’s important also to bear in mind that section 25 of the Patents Act does not permit the registration of patents in respect of computer programs.

Similar prohibitions against the registration of patents for computer programs exist in many other countries. However, the European Union has started granting patents for computer programs which had a practical effect, and the US has followed suit.

The net result is that patents are now being granted in respect of inventions that have a practical application, such as IT systems that introduce some practical application.

This leads me to suggest that companies, especially technology start-ups, should be careful in connection with the protection of their ideas. They should check whether it is possible to obtain patent protection, even under the disadvantageous SA patents system.