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02 September 2019
Do software inventions qualify for patent protection?
What protection was afforded to Gugulethu IT entrepreneurs?
How to prove infringement
What defences do allegedly infringing parties have against infringement actions?
Two IT entrepreneurs from Gugulethu recently applied for an interdict to prevent Nedbank, an asset management company, from using (ie, infringing) their invention, which was protected by South African Patent 2016/05259 and entitled "Method of and system for activating or deactivating a financial transaction card". Various questions have been raised by the public regarding the patent's validity, including:
This article discusses an action for patent infringement which followed an application for an interdict, not the application for an interdict itself.
The Patents Act provides that a patent may be granted for any invention which involves an inventive step and can be used or applied in trade, industry or agriculture.
The act provides no definition of 'invention'; rather, it sets out a list of subject matter which do not qualify as inventions for the purposes of the act. Here, among other things, the act provides that a computer program will not qualify as an invention for the purposes of the act. However, notably, the act provides that only a computer program as such is not patentable.
Therefore, a method or system that uses a computer program to provide a certain result may be patentable. The method or system must be new, involve an inventive step and be capable of being used in trade, industry or agriculture to qualify for patent protection.
A patent grants the patentee the right to exclude others from making, using, exercising, disposing of, offering to dispose of or importing the invention claimed in the relevant patent.
In the case at hand, the patent was granted and became open to public inspection on 30 August 2017 – a copy of this can be found online on the Companies and Intellectual Property Commission's website. While reading the patent, it is important to note that the protection afforded is delineated by its claims. In particular, the so-called 'independent claims' of the patent define the broadest scope of protection afforded therein. The patent at hand had two independent claims: one directed towards a method and the other to a system.
As an illustration, the first independent claim of the patent (claim one), reads as follows:
A method of activating or deactivating a financial transaction card, and at least one account associated with the card, the method comprising:
The Gugulethu IT entrepreneurs had to establish a chain of evidence demonstrating that one or more of the acts of infringement (as defined in the Patent Act) had, on a balance of probabilities, been perpetrated by Nedbank.
During infringement proceedings, the court will ask itself:
what would a person skilled in the art [technology to which the invention relates], on an integer-by-integer and purposive analysis of the claim, understand the forbidden field to be?
Based on this, the court stated that Nedbank would be considered to have infringed claim one of the patent if its method of blocking financial transaction cards included all of the essential integers of this claim. Importantly, infringement would still have been found had Nedbank's alleged infringing method included all of the essential integers of claim one of the patent, regardless of whether the alleged infringing method included additional essential integers.
One possible defence for an infringing party in a patent infringement action is that their product or method does not fall within the scope of protection of one of the claims of the alleged infringed patent. As mentioned earlier, a patent's claim can be infringed only if the product or method includes all of the essential integers (ie, characteristics) of said claim.
Any party being accused of patent infringement or otherwise may also elect to file a counterclaim against the infringement action for the revocation of the patent in question, based on one or more of the grounds for revocation cited in the act. Currently, the Patent Office does not subject patent applications to substantive examination (ie, the novel and inventive merit of the invention is not assessed before a patent application is granted). Therefore, if the allegedly infringing party can prove that the invention claimed in the relevant patent was not new or involved no inventive step, the patent will be liable to revocation. If a patent is revoked, the effect is as if the patent never existed and its proprietors would no longer enjoy any exclusionary patent protection under the patent.
The application for an interdict to prevent Nedbank from using (ie, infringing) the Gugulethu IT entrepreneurs' patented invention is no doubt only the start of a developing saga. Young entrepreneurs in particular are encouraged to follow this case earnestly to ensure that they are well acquainted with South African patent law and thus able to protect their inventions.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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