RC&I manages the filing and prosecution of patent applications on behalf of UCT. This section provides detail on the filing of the provisional patent application, which is the first step in the process. Additional information relating to the patenting process is provided i n the Inventors Handbook, which is given to inventors when they submit their Invention Disclosure Form.
In assessing whether your invention is indeed patentable and whether it needs to then be disclosed to RC&I in terms of the IPR Act, visit the Not Patentable page to see what cannot be patented.
The process leading up to the filing of the Provisonal Patent Application is shown in the figure above. Initially RC&I is contacted by the inventor and a meeting may be held to go through the process in more detail and to discuss the content of the Invention Disclosure Form and obviously to find out more about what the invention is actually about. For this meeting the Inventor completes as much of the form as possible.
Finalisation of the Invention Disclosure Form and providing the full technical description typically takes a couple of days, dependent on the Inventor.
The prior art search and report (discussed in detail below) again takes a couple of days depending on the time that the Inventor has available to prepare it.
The Invention Disclosure Form and Prior Art Search Report are sent through to the patent attorney who is appointed by RC&I. The patent attorney reviews the material and then, if they are based in Cape Town, a meeting is arranged to discuss the invention and to allow them to ask any questions.
This is followed by the drafting of the "patent specification" and review by the Inventors to ensure that it is accurate. This process is generally completed within two weeks, dependent on turnaround times.
Finally RC&I will instruct the patent attorney to file the application at the patent office and this is typically done the same day or within 24 hours of the instruction.
Filing the Provisional Patent Application
The Disclosure Form
UCT have an Invention Disclosure Form which captures the key information relating to the invention - read more here and download a form from the top of the right-hand panel on this page
The form is used for the first internal assessment of patentability and commercial potential. There are three key requirements for patentability:
- Novel - this means that the invention is new and has never been disclosed publicly (even by the inventor!), e.g. through journal publications, conference presentations and posters, online web postings or thesis examination. Discussions held with collaborators or contractors or potential commercial partners need to be under the protection of a non disclosure agreement (contact RC&I and we will ensure that one is put in place if necessary). The invention must also not have been anticipated and publicly disclosed by anyone else, or be found in general or patent literature (see Prior Art Search)
- Inventive - this is perhaps the most difficult aspect as it is subjective. Essentially it means that the invention is not 'obvious' to a person skilled in the art i.e. in that particular field. This can generally be regarded as a technician who would typically be carrying out routine tasks.
- Useful - this means that there is 'industrial' application and is generally easily met.
There also needs to be some commercial potential, or social benefit for UCT to invest in the patent protection.
At the disclosure phase one of the important aspects to establish is inventorship - who the inventors are. An inventor is a person who has contributed to the "inventive step". A person who had conducted significant testwork defined by an inventor, would not be considered an inventor, but rather regarded as an 'enabler'. Similarly, a co-author is not necessarily a co-inventor.
Incorrectly including somebody as an inventor (or omitting somebody) can invalidate a patent. An 'enabler' can, at the inventors' discretion, be recognised and included in the share of the portion of royalties accruing to the inventors. Additional information on inventorship is available from RC&I.
Full names, as appearing on your birth certificate, as well as your residential address are required by the Patent Office and appear on the patent application.
Inventor's Share in IP
A section of the Disclosure Form also captures the contribution that was made by each inventor to the IP. Often inventors share the IP in equal portions (the default position), but on occasion the input by the different inventors can differ considerably and the share in the IP needs to reflect this.
For UCT inventors, the share in the IP also determines the split of royalties that may accrue to them and it is important that this is established upfront. See part D of this booklet for more information on royalties.
IP Rights and Funding
As mentioned in the introduction, UCT is the default owner of the IP generated from research activities and as such is the "Applicant" or "Assignee" on patent applications. Although the application is made in the name of the university, the inventors are also registered.
If the invention is generated through work funded by a research contract then, depending on the terms of the funding received, UCT may assign the rights to the IP to the funder. Here the patent will be applied for in the name of the funder and again, the inventors will still be registered and appear on the patent. Often the funder drives and administers the patenting process and funds it!
With collaborative research projects, UCT may share the ownership of the IP with one or more parties. Often the IP share is agreed upon according to the terms of the collaboration agreement and may be based on the financial contribution, or intellectual contribution of the parties.
For this reason it is important that the funding that supported the research leading to the invention is disclosed. This ensures that the IP clauses of any associated agreements can be scrutinized if necessary to determine shares in a particular IP right, which may be protected through patenting.
If draft publications are available, or abstracts from theses and research reports, these can be submitted to the patent attorney so that they can 'cut and paste' this information when preparing the provisional patent specification. Often this provides either background material or experimental results, etc. that are included in the patent as examples. This saves the inventors' time as well as attorney expenses in preparing the disclosure document.
Patenting requires an "enabling disclosure" to be made. The best method of providing this is by way of examples that cover all the claims that will be made. The examples need to have sufficient details that a person skilled in the art could follow the procedures and implement the invention. Additional information regarding the requirement for examples, especially in the biotech and chemistry areas, is available from RC&I.
Prior Art Search
The primary objective is to identify all patents and literature that are close to the invention and to put the invention in context against this background, i.e. distinguish the ways in which the invention is 'novel' and 'not obvious'. The prior art search is different to a typical literature review - we require a 'cut and paste' of the abstract and a comment on the applicability. Separate information will be provided by RC&I on patent searching and on how to access the Total Patent database, which is facilitated by UCT.
Drafting the Specification
A patent attorney from one of the several law firms that UCT interacts with is appointed by the RC&I Case Manager to draft the provisional patent specification. The patent attorney is selected based on their technical background (they have a technical qualification in addition to their legal qualification) as this ensures that they can readily communicate with the inventor and understand the complexities of the invention.
The disclosure form is sent through to the patent attorney. It provides them with the material that they will use to prepare the first draft. A briefing meeting is generally held too, which allows the patent attorney to gain a more detailed understanding and to ask the inventors any questions. The draft is circulated to the inventors so that it can be edited and clarification or additional material provided where necessary. It is important that as much is included in the specification as possible, as information can be removed at a later stage but not added (unless it falls within the original scope).
To minimize costs, it is important that the patent attorney is provided with complete information detailing the invention up front, and that the number of rounds of editing are kept to a minimum; all the inventors should review the specification and confirm that they are happy with it. A "lead" inventor is appointed by RC&I to drive this process and contact is generally made via them.
Patent attorneys have draftsmen who can prepare any drawings that may need to be included in the specification, unless the appropriate quality drawings are already available.
Claims are not included in the provisional specification as these can be unnecessarily restrictive at this stage, but they are effectively outlined in the "Summary of Invention" section.
The formal claims are drawn up by the patent attorney at the time of preparing a full patent application (usually a year later) where they appear as a list in the specification. They are arranged from the broadest, most general claim to subsequent narrower claims that can be viewed as "fall-back positions" if the first claim were to be challenged successfully. The subsequent claims become more and more specific.
Once the inventors are satisfied with the specification and drawings that have been drafted by the patent attorney, RC&I will provide the patent attorney with the official instruction to file the provisional patent application.
Filing the provisional application secures a "priority date" (i.e. the date of filing the application) which is critical to the success of the application. Patents are territorial i.e. only give protection in a specific country. However, due to the Paris Convention, member states (some 125) recognise this priority in all signatory countries provided that a full application is made within 12 months of filing the provisional.
This means that should somebody file a patent in any signatory country after your priority date, their patent will not be allowed as long as you have proceeded to file a full application later.
Provisional patents are not published during their 12-month life and are maintained confidential by the Patent Office. Once a provisional has been filed, it is possible to publicly disclose the invention (e.g. by submitting a thesis for examination, or publishing a paper in a journal or in conference proceedings) if necessary. However, where public disclosure can be avoided, maintaining confidentiality during the period that the provisional is in place is useful for two reasons:
- the commercial market will be unaware of the invention; this gives the commercial partner that UCT may associated with a time advantage
- it allows for a greater amount of additional material to be included in the full patent application, assuming that this material falls under the broad umbrella of the original provisional (e.g. if one publishes experimental results in a journal, which had not been part of the provisional, these could not be included in the full application). A way of avoiding this, if there has been significant development coupled with a need for public disclosure, is to file a number of successive provisionals, which are rolled into one full application (with a range of priority dates associated with the different sections of material included!).
We file at the South African Patent Office, for ease and cost saving, unless there is a specific reason (e.g. collaboration partners prefer to file in their country, or they have been appointed as lead for the application, or if public disclosure has occurred in which case only a US application is possible).
At the time of filing, the inventors will be asked to sign an Assignment Form, which is lodged at the patent office. This is merely a confirmation of the assignment that has already taken place in terms of the UCT IP Policy (the policy can be downloaded off the RC&I website). UCT (represented by the Registrar) will also sign a Power of Attorney to appoint the attorneys to act on UCT's behalf in filing the patent application.
It is important to remember that your invention is only protected from infringement once the patent has been formally granted. The application filing process can take anywhere from two to five years, and often tales much longer depending on the application route and the countries involved. During this time you are not yet in a position to take legal action to defend your invention.