Finding the balance between publication and protection
Researchers are known to be analytical individuals, driven by passion for their fields of study, and happy to tirelessly slave over their Western blots, culture flasks and Python scripts day in and day out in the name of science. The search for answers to life’s most complex questions probing the cause of disease, identification of risk factors and development of life-saving therapies seems a noble feat that should suffice as contribution to mankind. However, without wide, public dissemination of new findings, science fails to progress at a sufficient pace achieved only through collaboration. Publication in peer-reviewed journals is not only a tool necessary to advance a field but is also used to measure the success of researchers, affecting their chances of securing funding, being promoted, and collaborating in a pool of millions of researchers worldwide.
Given the clear need to publish – or else perish, according to the well-known mantra in the scientific community – it may be surprising to hear that publishing too quickly has its disadvantages. Research often leads to the production of intellectual property (IP) which inventors naturally wish to protect for financial and other strategic benefits. However, publication of such information destroys its novelty, a requirement without which patent protection may not be obtained.
According to the South African Patents Act 57 of 1978, an invention is considered to be new if, at the priority date of a patent application, it does not form part of all publicly available information in the world – including publications. As the point of publication is – as the word suggests – to make information public, a balance must be struck between disseminating new scientific findings before competitors and protecting the novelty of patentable inventions derived from such findings.
Since research is a collaborative process rarely requiring the efforts of only one individual, it is important to note that other common practices besides publication may also ruin your chances of patent protection. Discussing an invention with a collaborator without confidentiality, presenting findings at a conference, and posting patentable research on social media all constitute novelty-destroying acts.
The Patents Act does, however, provide certain exceptions to the novelty requirement to protect the inventor. Firstly, if the invention was known, disclosed, or used without the consent of the inventor, such knowledge, disclosure, or use will not be novelty-destroying if it was obtained from the inventor who then applies for patent protection with reasonable diligence upon finding out. The second exception is if the applicant for a patent used the invention in a reasonable technical trial or experiment in South Africa. This is not to say that such exceptions should be blindly relied on.
Knowing the basic requirements for patent protection in South Africa can avoid accidental disclosure and the unfortunate consequence of an inability to reserve IP rights for innovation. Given the value of both publication and patents, a strategy is required to have your cake and eat it too. So as not to perish your chances at patent protection, patent first and publish later.
Devina Chetty is a candidate attorney in the patent department. She is focused on freedom-to-operate and patentability investigations, patent drafting and prosecution, as well as transactional IP.
Devina completed a Bachelor of Science degree with majors in Genetics and Cell Biology (summa cum laude) followed by an Honours degree in Genetics at the University of KwaZulu-Natal (summa cum laude). She later completed a Master of Science in Human Genetics and is currently studying towards a Bachelor of Laws through the University of South Africa. She has a particular interest in innovations in the biotechnology and human genetics field.
Von Seidels is an intellectual property law firm specialising in patents, trade marks, copyright, designs, trade secrets, licensing, and related areas of IP throughout Africa. Based in South Africa, Von Seidels also has offices in ARIPO (Namibia), OAPI (Cameroon) and Nigeria.