The Patents Act (57/1978) does not define the term 'inventor' per se, although it is generally understood to refer to a natural person who conceives of something novel in the context of patentability criteria. Unless otherwise provided or agreed, an inventor has the first right to file a patent application to protect their invention. Where an inventor is employed to research or invent on behalf of an employer, the inventor has the right to be cited on a patent application as such, while the invention is generally assigned to the employer by way of a general assignment in the employment contract or a specific assignment for the patent application in question, with the employer being the rightful owner or assignee of the application.
Patent applications may be filed in the names of multiple joint inventors or co-inventors. All cited inventors must have contributed to the invention, although not necessarily in equal parts. To date, the South African courts have not had to deal with the question of what such a contribution entails, but it is generally considered that each contribution must consist of an inventive step which is not merely imparting knowledge that is known in the art.
In the United States, in order to identify an inventor, the elements that comprise the invention must be examined.(1) First, an invention comprises the conception of an idea or subject matter. Second, the idea must be reduced into practice. Conception means that the idea must be definite and permanent so that an ordinary person skilled in the art could reduce that idea into practice without additional research. Reduction may be actual or constructive. Actual reduction refers to the working of the invention, while constructive reduction is defining reduction with the mind, referring to the enabling disclosures contained in the patent specification. Europe also applies the conception and reduction test as followed in the United States, but adds that the weight of each inventor's contribution may be determined in the sense that without the contribution, the invention would not have existed.
Based on South African patent practice, it appears from Stanelco Fibre Optics Ltd's Applications(2) that reduction into practice is not a necessary component for determining inventorship. However, to infer that reduction of an invention as a whole is not a necessary component in South African patent practice would be incorrect, as Section 61(e) of the Patents Act provides that a patent may be revoked if the specification does not sufficiently describe the invention to enable the ordinary person skilled in the art to carry out the invention. What the Stanelco application means is that to identify the inventor of a specific claim, only conception (and not reduction) need be considered. Whether the claim infers proper reduction or not is a separate query and will influence the validity of a patent application.
Therefore, to determine the true inventors of a patent, the quality of a contribution and not the quantity of contributions must be measured by determining the following:
- First, every contribution by an inventor must be inventive.
- Second, it must be deduced that the invention would not have been devised without such contribution.
Thus, it is important to scrutinise the contributions of inventors, or persons aspiring to be cited as such, by determining whether they actively contributed to the realisation of the inventive concept as protected by the patent claims. If the invention would not have materialised without a specific person's contribution, that person would qualify as an inventor. A person that merely performed a task or acted on instruction towards proving a concept or researching and documenting the invention would not necessarily have a claim to inventorship.
For further information please contact Jaco Theunissen or Christina Louw at KISCH IP by telephone (+27 11 324 3000) or email ([email protected] or [email protected]). The KISCH IP website can be accessed at www.kisch-ip.com.
Endnotes
(1) Burroughs Wellcome Co v Barr Laboratories Inc, 40 F.3d 1223, 1227-1228, 32 USPQ2d 1915, 1919 (Fed Cir 1994).
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