Inventor Dean Kamen has said that "[e]very once in a while, a new technology, an old problem and a big idea turn into an innovation". Such an innovation may cause the inventor to obtain a patent to protect it. A granted patent is a highly lucrative commercial tool in the hands of the patent applicant. However, inventors are not necessarily entitled to apply for a patent.
It remains a question of fact whether a person is the inventor of a particular invention and whether the applicant was rightfully entitled to apply for the patent. It is ordinarily assumed that the person who invented a particular process or device would be the inventor and that the inventor would be eligible to apply for a patent for their invention. The standard position in all jurisdictions is that an application for a patent may be made by the inventor. However, in some instances, the inventor assigns their right to apply to another person or juristic entity by operation of law.
In South Africa, Section 27(1) of the Patents Act (57/1978) states that an application for a patent in respect of an invention may be made by:
- the inventor;
- any other person acquiring the right to apply from the inventor; or
- both the inventor and any other person acquiring the right to apply from the inventor.
Section 27(2) further states that in the absence of an agreement to the contrary, joint inventors may apply for a patent in equal undivided shares.
In terms of the act, an 'applicant' may also include:
- the legal representative of a deceased applicant; or
- an applicant who is a person under legal disability.
An invention that is made by an employee in the normal course and scope of employment will vest in the name of the employer unless otherwise provided in writing. Therefore, if A is an employee of B, the rights to file the patent application will vest automatically in the name of B.
It is standard practice for the employee as the inventor to assign the invention to the employer by means of a contract of employment; however, should the employee refuse to assign the invention to the employer at a later stage, the employer may apply for the grant of a patent and lodge the employee's contract of employment to support the assignment of the invention by operation of law.
However, Section 59 aims to protect the inventions of employees which are made after their termination of employment and which do not fall within their course and scope of employment. Employees should be encouraged to be innovative without the fear that their employer will own all of their inventions.
Where a dispute arises between persons as to their rights to obtain a patent for an invention – or to make, use, exercise or dispose of an invention – any such party may apply to the Court of the Commissioner of Patents to decide the matter in dispute. The commissioner will decide the matter in dispute in terms of Section 28.
It is highly recommended that inventors consult with a patent attorney when they are uncertain whether an invention falls within the scope and course of their employment. It is further advisable to enter into negotiations with employers regarding compensation for the invention.
The general rule is that the inventor or any other person acquiring from them the right to apply (the assignee) may apply for the grant of a patent. Inventors should remember to consider their employment contract and whether the invention falls within the course and scope of their employment before applying for a patent as the inventor.
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