Monkey Business

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According to the South African Copyright Act No. 98 of 1978 the owner of the copyright in a photograph is defined as the person responsible for the composition of the photograph.

However, what happens if an animal, rather than a person, is responsible for the composition of the photo? Who is then considered the owner of the copyright?

In 2011 a British wildlife photographer, David J Slater, left his camera unattended in a national park in North Sulawesi, Indonesia. A female crested black macaque monkey, got hold of the camera and managed to take a rather spectacular self-portrait, or rather a “selfie”.

The photo was published in numerous magazines and websites and was eventually placed on a website named Wikimedia Commons, which contains a collection of photographs which are open for public use. Slater, considering himself the rightful owner, requested the removal of the photo from the website. However, his request was denied.  Wikimedia Foundation argued that the monkey took the photograph and since monkeys can’t hold copyright, the image is in the public domain.

Since in most, if not all countries, the right to copyright ownership is limited to human beings, the  argument of Wikimedia Foundation seems to be valid. According to the UK’s Copyright, Designs and Patents Act 1988 the copyright in a photograph is owned by the person who creates it. The US Copyright Office has advised that, for work to be copyrightable, it must “owe its origin to a human being”.

Subsequently a legal battle between Slater and the Wikimedia Foundation ensued. Slater argued that he owns the rights to the image and the royalties which comes from the publishing thereof, because he set up the equipment which enabled the monkey to press the button and take the photograph.

However, The US Copyright Office settled the matter. It said that images taken by animals, including the 2011 primate self-shot, could not be registered for copyright by a human. Likewise the Office said that it will not register works produced by nature, animals or plants. The image therefore forms part of the public domain.

Slater might have had a reasonable argument, if the monkey had taken the photo on a command from Slater, that the artistic expression of the photo belonged to him and that the monkey was merely his assistant. However, since the monkey took the photo of her own volition, this argument was not tested.

It would seem that there is no space for so-called monkey business when it comes to copyright.

Monty Rademeyer – Partner
monty@mrf.co.za

(App)ropriate  Protection

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VARIOUS WAYS TO PROTECT YOUR MOBILE PHONE APPLICATION

Mobile phone applications have become increasingly popular, and given the reliance that people place on their smart phones – for good reason. As a result, savvy entrepreneurs are increasingly looking towards ways of protecting their new smart phone applications in order to secure their place in the market.

A smart phone application is essentially application software which is developed to run off a handheld device. Traditionally, software has found protection by way of copyright. In South Africa, copyright protection arises automatically and protects the source code, the screen layout as well as any characters or animation forming part of the software. While this form of protection can be used to ensure that someone does not copy the exact same application in terms of how it looks, it does not prevent someone from independently producing a version of the application. Given these shortfalls, it is often desirable to protect the underlying principle involved in the operation of the application. In this respect, it is worthwhile considering patent protection.

The issue of patenting software and mobile applications is a contentious one in South Africa.  South African patent law is governed by the South African Patent Act and, in terms of the Act, a program for a computer, as such, is specifically excluded from patentability. However, foreign jurisdictions whose legislation is largely similar to ours in terms of patentability requirements can be looked to for guidelines in this regard. The current trend in the UK is to grant software patent applications, with the proviso that the program must produce a technical result which goes beyond the normal effect that a computer program has, when run on a computer. Similarly, in Europe, computer implemented inventions have been allowed. The European Patent Office has held that if a computer program has a technical character, then it is not excluded from patentability. Patents for software have been granted in many fields where the software provides some kind of a technical contribution including in medical devices, industrial processes, communication/media technology such as voice recognition, and video compression.

Guided by these principles, mobile applications are not necessarily excluded from patentability. In particular, the method involved in the implementation of the application and how it interacts with various hardware components is not excluded, provided the application produces some kind of a technical result. Otherwise put, the underlying method may be inventive, and the use of software to implement the method, will not preclude valid patent protection.

In South Africa, the Patent Office does not examine a patent application on the merits. So, provided your application complies with the necessary formalities, the patent will be granted. However, grant does not necessarily mean that the patent is valid. The validity will only be determined when a third party challenges the validity, which will ultimately be decided by the court. To date, the South African courts have not yet made a ruling on this issue. Therefore, whether a particular mobile phone application is patentable is largely determined on a case by case basis. It is however, always advisable to file a provisional patent application at least as a preliminary form of protection in order to ensure that you do not miss your chance to do so at a later stage.

Furthermore, filing a provisional patent in South Africa may be a cost effective solution to obtaining patent protection in foreign jurisdictions where patents directed towards software and mobile applications are allowed e.g. the US, UK and EU. Comparatively, filing a provisional patent in South Africa is cheaper than one filed in a foreign jurisdiction. It also provides you with a 12 month period in order to assess the market so that when the time comes to file in foreign jurisdictions you would have had time to do your research and can file only where it will be commercially viable.

There are several other forms of protection to consider either in conjunction with, or as an alternative to patents. Trade mark protection can be a valuable tool in terms of marketing your product. The name, logo or slogan of your brand associated with the mobile application can be protected. Contractual agreements are also of value in terms of software or mobile phone applications. In particular, confidentiality agreements and licence agreements should be considered.

There are various forms of protection available to someone who has developed software or a mobile phone application. It is advisable to consider all forms of protection and to choose the ones which make commercial sense for your particular product.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Monty Rademeyer – Partner
monty@mrf.co.za

Reality Bites

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A LOOK AT REALITY TELEVISION CASE LAW AND BREACH OF CONFIDENCE

In about 2006, Brian Wade and Geraldine Perry conceived an idea for a reality television programme. The show, to be called “The Real Deal”, was to be a music talent show featuring artists who write and perform their own material. The key element was that the original track performed by the artist on the show would be available for download after the show and eligible for inclusion in the national chart. The winner of the competition would receive a contract with a major record label.

Wade and Perry pitched their idea to various major record companies and BBC but all were uninterested, particularly in light of the fact that the show featured original music. Wade and Perry adjusted their concept so that contestants would sing covers as well as original material. Wade and Perry prepared a slide show in order to pitch their concept to British Sky Broadcasting Limited (Sky). After Sky expressed interest in the concept, Wade and Perry forwarded their slide show to Sky in order for a final decision to be made. However, Sky ultimately decided not to commission The Real Deal.

In 2010, it transpired that Sky was developing a new music talent show called Must Be The Music. Like The Real Deal, this show would incorporate downloading and original music. When Wade and Perry confronted Sky, it argued that, although the two shows contained similar elements, they were actually very different.

Must Be The Music aired later that year and the show as well as the acts enjoyed some success. However, the audience ratings were poor and Sky cancelled the show in January 2011. However, the show did achieve more success abroad, reaching its sixth series in Poland in September 2013.

In July 2012, Wade and Perry instituted formal legal proceedings in the High Court of Justice of England and Wales against Sky based on misuse of confidential information. They contended that Sky misused the confidential information in their slide show by taking ideas from The Real Deal and using them to create Must Be The Music. Sky’s defence was that, regardless of any similarities, its programme was independently created and that Wade and Perry’s ideas were too vague to attract the protection of the law of confidence.

The court identified three requirements for liability for breach of confidence:

  1. Information in respect of which relief is sought must have the “necessary quality of confidence about it”;
  2. The information must have been imparted in circumstances importing an obligation of confidence; and
  3. There must be an unauthorised use or disclosure of that information.

Wade and Perry’s case was that ideas within their slideshow had been copied. Therefore, the judge indentified and considered 14 elements in the slideshow, 8 of which the claimants relied on (relating to the format, use of downloads, original material etc). However, on their own, these ideas were not original as they were all known in the industry and had been used before in other music talent shows. The judge was even convinced that the combination of these elements enjoyed the necessary quality of confidence to be protected by law. It didn’t help that the ideas were expressed as a pitch rather than a fully worked out show. Therefore, the judge found that the ideas were not sufficiently detailed to be protected.

Sky’s witnesses gave a complete version of events which explained that Must Be The Music came from other sources than the person at Sky who had seen Wade and Perry’s pitch and the slideshow and confirmed the independent creation of Must Be The Music. Birss J concluded that “There are similarities between the show and some ideas in the deck but the evidence explained their origin. The inference that the ideas which Must Be The Music embodies in common with The Real Deal must have been derived from the deck is not strong enough to leave me in any real doubt about the right conclusion in this case. I accept Sky’s evidence. I find the Must Be The Music was created entirely independently of The Real Deal”.

Judgment: Brian Wade and Geraldine Perry v British Sky Broadcasting Limited [2014] EWHC 634

Kim Rademeyer – Partner
kim@rademeyer.co.za

The ‘Money’ Genes

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ECONOMIC IMPACT OF THE HUMAN GENE PATENT

While patent offices around the world have been granting patents which lay claim to human gene sequences for decades, the matter was famously decided in the US case of the Association for Molecular Pathology v Myriad Genetics. Myriad owned the rights to two genes, BRCA1 and BRCA2. Any mutation to these genes dramatically increases a woman’s chance of developing breast and ovarian cancer.

Does this mean that if you are sitting with a BRCA1 or BRCA2 gene that Myriad could now lay claim to it? The simple answer is no. A gene patent is one that includes one or more claims over an isolated or purified genetic sequence. It is this isolated gene sequence and not how it would occur naturally in the human body that can be patented.

The grant of such patents has caused much controversy. It is widely believed that the existence of a patent covering isolated biological material might inhibit research and development, thereby depriving society of advances in medicines and diagnostics. Furthermore, as in the Myriad case, the presence of the patent means that the high cost of carrying out the test for this gene mutation prevents many from seeking such care and bars them from the benefits of early detection. There is also a perception that patents hinder competition and without competition firms are at liberty to charge seemingly exorbitant prices for their products. However, is the impact of gene patents purely negative and what factors can be used in determining the economic impact of these patents?

In order to assess the possible economic impact of these gene patents, it is necessary to return to basics – what exactly is the economic rationale behind a patent? A patent provides an inventor with a limited period of exclusive control over the invention. During this time nobody is allowed to make use of the invention without obtaining permission. It essentially encourages people to innovate and to share the knowledge behind the innovation by granting them a legally enforceable right to exploit the invention for a set period. A patent is therefore a trade-off between innovation on the one hand and competition on the other.

The commercial barrier involved in bringing an idea to the market can be vast. Inventions in the medical field typically take 12-15 years and billions of dollars to become products on the market. Even then, such inventions are not always successful. Before a product or diagnostic test can even reach the market, research is conducted, clinical trials are carried out, the necessary regulatory permission is obtained and only then is the product manufactured and launched. An invention based on a human gene patent is no different. Companies, both private and public, spend hundreds of millions of dollars every year in research and development. The gene sequence is then applied to diagnostic testing such as in the Myriad case or for the development of medicines. Without the promise of a possible financial benefit, there would not be an incentive for such an investment. Companies rely on the added cash flow created by the patent rights due to licensing agreements and the bargaining strength in the market place.  Patents are therefore one way in which to recoup high development and commercialisation costs, which enables the transfer of technology between the researchers and companies.

The belief that patents grant a monopoly and therefore supress competition is not entirely correct. It is arguable that a partial monopoly is created as technical and economic substitutes can serve as competitors. In the same way, while the monopoly might delay testing as in the Myriad case, and does hinder research to a certain extent, it is arguable that the sole purpose of a patent is to incentivise innovation and spur the innovation of others. It creates a market for innovation as rival firms or researchers “design around” the innovation. The patent process disseminates information providing tools for fellow researchers or rival firms to seek new innovations. Often, as new innovations are developed, the patented innovation slowly becomes more expensive to maintain than the financial gains it provides, thereby causing the market to look towards alternatives, thus driving the cycle.

While South Africa is not a key player in the field of genetic research and in particular, gene patents, it is interesting to note that economic impact is not necessarily all bad. The purpose of patents is essentially to create incentives for new developments and advances in technology, ultimately to benefit society as a whole. However, as with most things in life, it doesn’t come without pitfalls and trade-offs.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Monty Rademeyer – Partner
monty@rademeyer.co.za

Anti-(biotic) Resistance

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A VIEW ON THE ROLE OF PATENTS IN ANTI-BIOTIC RESISTANCE

There is a fundamental conflict between a desire to maximise profits by selling a patented antibiotic and public health threats.

The worldwide use of antibiotics in hospitals, by family practitioners and in husbandry (to fatten animals) has created a problem whereby millions of people are hospitalised each year for multi-drug resistant bacterial infections. Every dose of antibiotics creates selective evolutionary pressures, whereby bacteria survive to pass on genetic mutations.

It is possible that we are at a stage were human innovation is no longer capable of outpacing bacterial mutation which is possibly a result of abusing incentives for producing antibiotics.

A survey which was done in 2004 of fifteen major pharmaceutical companies, including Merck, Pfizer and Johnson & Johnson showed that of 506 drugs undergoing research and development, only five were antibiotics. It has been noted that in the last 30 years no significant new antibiotic has been put on the market.

A major cause for the decline in antibiotic development is the poor return made by the companies. This is because antibiotics are short-term therapies that completely cure their target diseases. The costs of developing a novel antibiotic is also extremely high, and is not considered a good investment.

One way in which pharmaceutical companies try to mitigate against this poor return is to push the sales of a specific antibiotic during the drug’s patent lifetime.

According to Horowitz JB  the resistance to a specific antibiotic tends to increase when the patent on the antibiotic reaches its expiry date. This could be due to the sales which were pushed during the lifetime of the patent and because, upon expiry of the patent, there is a significant decrease in price and an increased availability of the specific drug.

The international intellectual property regime provides an environment which encourages pharmaceutical companies to develop and market drugs to maximize private profits, rather than benefit public health. Thus a pharmaceutical company is not generally willing to preserve the efficacy of a patented drug by limiting the use thereof, before the patent of the drug expires and generics can enter the market.

One way in which to increase the longevity of existing drugs (i.e. the effectiveness) might be to reduce the use of medically relevant antibiotics and to use new drugs only when they become absolutely necessary. This, however, directly impacts on the incentive to develop and produce new antibiotics.

The Infectious Diseases Society of America (“IDSA”) has strongly advocated the extension of patent protection for novel antibiotics to allow pharmaceutical companies to enjoy exclusive markets for longer. The belief is that the companies will have a longer period to generate profits to recoup investments and they will be encouraged to reserve antibiotics for future public health threats.

The downfall to this suggestion is the fact that prices will remain higher for longer and poor countries will be negatively impacted.

According to the World Health Organisation, the world is entering a “post antibiotic era” and if a solution is not found this could represent the greatest threat to public health in the twenty first century.

Monty Rademeyer – Partner
monty@rademeyer.co.za

The “i” in Knowledge

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A VIEW ON INDIGENOUS KNOWLEDGE IN SOUTH AFRICA

“… knowledge, unique to a given culture or society, which accumulates over generations, as communities interact with their environment …”

Even though certain manifestations of indigenous knowledge have already been recognised and protected by the Patents Amendment Act of 2005, the President recently assented to The Intellectual Property Laws Amendment Act 28 of 2013 which was published in the Government Gazette on 10 December 2013 (hereafter referred to as “the Act”). The Act will only come into operation on a date fixed by the President by proclamation in the Gazette.

The function of the Act is to provide for the recognition and protection of certain manifestations of indigenous knowledge as a species of intellectual property. The following are to be amended:

  • The Performers’ Protection Act of 1967

to provide for the recognition and protection of performances of traditional works, by providing copyright protection to the performance of a traditional work, whether it is in the form of  an artistic work, dramatic work, literary work or a musical work as defined in the Copyright Act;

  • The Copyright  Act of 1978

to provide recognition and protection for indigenous knowledge by providing the indigenous community from which the knowledge/work originated and acquired its traditional character, the right to authorship and the right to receive royalties and benefits associated with the economic exploitation of the works;

  • The Trade Marks Act  of 1993

to provide for the recognition of indigenous terms and expressions and for the registration of such terms and expressions as trade marks and to provide for further protection of geographical indicators, collective trade marks and certification marks in so far as they relate to indigenous cultural expressions or knowledge; and

  • The Designs Act of 1993

to provide recognition and registration of indigenous designs which can either be an aesthetic or functional design with an indigenous or traditional origin and a traditional character.

The Act also makes statutory provisions which provide for the establishment of a National Council in respect of indigenous knowledge, a National Database for the recording of indigenous knowledge and a National Trust and Trust Fund for the purposes of indigenous knowledge.

Ultimately the Act aims to empower communities and prevent exploitation of their knowledge. Communities will be able to form business enterprises in order to commercialise the traditional knowledge and rightfully benefit from it economically. The Act has however come under criticism a more in-depth review of certain aspects of the Act will follow in future.

Should you have any queries relation to Indigenous Knowledge, please feel free to contact us and one of our specialists will assist you.

MRF
info@rademeyer.co.za

(Likelihood of) Confusion?

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A VIEW ON SIMILAR BRANDS AND TRADE MARKS

The rule of thumb in trade mark law when deciding whether infringement has taken place is to view the products side by side in order to ascertain whether the ordinary consumer is likely to be confused into thinking the products originate from the same source.

Can you tell the difference between the below fragrances at first glance? We think Prada will have a strong case against Preferred Fragrance for trade mark infringement as it has established a reputation in the trade mark as well as the get-up of the product, namely the girly pink packaging, the shape of the bottle and the ‘party girl’ logo, which elements Preferred Fragrances has copied.
            
The Ukrainians are up in arms after Germany company Henkel released a toilet freshener which resembled the Ukrainian flag, to the extent that Henkel has now removed the product from the market in Eastern Europe.
           
Starbucks lost their case against Black Bear Micro Roastery’s CHARBUCKS coffee blend as the Court did not believe CHARBUCKS could impair the distinctiveness of the internationally well known STARBUCKS brand. We agree with this ruling – when the marks are compared side by side, there is no resemblance between the brands and it is evident that The Black Bear Micro Roastery has not intended to pass itself off as Starbucks.
                       
Rovio, the makers of the popular ANGRY BIRDS game, is suing the manufacturer of golf clubs trading under the name ANGRY CLUBS for trade mark infringement. We believe the golf club manufacturer will succeed in proving that goods offered under the respective marks are not sufficiently similar to cause confusion in the market place.
             
As intellectual property practitioners, we always emphasise to our clients the importance of creating and using a trade mark that is distinctive and original to avoid confusion in the market place or, worse, legal action by third parties. The above cases demonstrate the importance of devising an original trade mark and protecting one’s trade mark as well as the get-up that is associated with the product so to prevent others from benefitting from the goodwill and reputation one has established in the brand.

Kim Rademeyer – Partner
kim@rademeyer.co.za 

iPolicy

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AN OVERVIEW OF THE DRAFT NATIONAL IP POLICY

The Draft National Policy on Intellectual Property was released for public comment in September 2013. The policy aims to co-ordinate and streamline intellectual property legislation in South Africa. Some of the objectives of the policy include “to improve access to IP- based essential goods and services, particularly education, health and food” and to “introduce a public health perspective into the IP laws”. These objectives and the strong focus on health were largely as a result of years of campaigning by organisations like Medicines Sans Frontiers (MSF) and the Treatment Action Campaign (TAC) for cheaper medicines, the price of which these organisations believe are inflated by patents and protection offered thereunder.

While the policy covers a wide range of issues, it is unfortunately not always clear and somewhat ambiguous – an aspect which has received much criticism.

Not much is said about Registered Designs and Trade Marks in the policy apart from the suggestion that ambush marketing legislation, which was used during the 2010 Soccer World Cup, should be extended to cover all large sporting events.

Copyright was afforded a little more attention. The policy recommended against extending the terms of protection beyond 50 years, choosing not to follow many other developed countries. It also suggests that royalty administration and collection should be centralised in one state-run collecting society. Reference is also made to allowing reverse engineering of software, the objective of which is to allow for software to be adapted for local needs of creating “broad exemptions for education, research and library use” as well as fair rights use for internet users.

Patents received the most attention with a strong focus on the patent prosecution system in South Africa. The current system is a deposit based system in which patent applications are only examined as to their formalities. If the application complies with the formalities, the application can proceed to grant. A drawback of such is a system is that more “weak” patents are granted, which could prevent people from doing acts, which, without the existence of the patent, they should be entitled to do. Such patents can only be removed from the register through lengthy and costly revocation proceedings where the merits of the patent are then assessed and decided by the court.

The policy recommends that an examination system be implemented, where patent applications are examined as to their merits. An examination on the merits requires an investigation into whether the invention is novel and inventive. It is believed that this will reduce the amount on “weak” patents that are granted each year. The policy also recommends the adoption of a pre- and post-grant opposition procedure. This will allow all interested parties to challenge patents without having to engage in expensive litigation. The policy does, however, acknowledge that the adoption of an examination system would require a vast array of skilled persons and that South Africa may not have the capacity to implement such a system. The policy suggests the use of the resources and staff of universities and research institutions in the examination process.

The recommendation of an examination system was heralded by activist groups such as the TAC and MSF, who lobbied for the adoption and implementation of a patent examination system for all pharmaceutical patent applications as well as for the strengthening of patent requirements to prevent “evergreening”. Evergreening refers to making small changes to an existing drug which is about to reach the end of its term for patent protection, in order to gain a new patent. The policy addresses these concerns through the recommendation of an examination system. This, it is believed, will result in “stronger” patents being granted, as they have undergone examination and will lead to less patents being granted in the pharmaceutical industry which may prevent generic medicines from being produced.

While the policy is not always clear, it does set out some objectives which give an indication of where IP may be heading in the future. The policy reads much like a wish list and it will certainly be interesting to see how the laws will be adapted to fulfill these objectives.

Hillary Brennan – Practitioner
hillary@mrf.co.za

Need a (Basic) Will?

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NATIONAL WILLS WEEK – 7 TO 11 OCTOBER 2013

National Wills Week is a social outreach and access to justice initiative. During the week of 7 to 11 October 2013, MRF will offer the following complimentary* services to any member of the public as part of our participation in this year’s National Wills Week initiative:

  • a short explanation on the importance of having a properly and professionally drafted Will;
  • drafting of Basic Wills; and
  • advice on the appointment of an executor.

Consultations in relation to these services may be conducted free of charge at our offices in Ferndale. Directions to our offices can be found on our website, www.rademeyer.co.za. Please contact us on 011 886 3001 to book an appointment with one of our practitioners. Please note that consultations are strictly by appointment only. Alternatively you may e-mail us on info@rademeyer.co.za.

*Charges will be raised for redrafting/amending existing Will or for drafting Complex Wills involving Trusts.

MRF
info@rademeyer.co.za

Pa(per)tent Pitfalls

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Pitfalls of paper anticipation in South African patent law 

When attempting to patent an invention in South Africa, two main requirements must be met, the invention must be both novel and inventive. These two requirements are universal, albeit defined differently in different jurisdictions.

When the validity of a patent is being tested, the above two requirements are formed into questions, i.e. 1. is the invention novel? And 2, provided the answer to 1 is a yes, then is that invention inventive?

The second question, inventiveness, is subjective, and is generally determined as to whether the invention is as a result of a logical step in the development or advancement within a particular industry. Stated another way: “could a person skilled in the art easily have taken that step?” If the invention is obvious to a person skilled in the art, the invention will not sustain a valid patent. Both questions must be answered in the affirmative to obtain a valid patent.

However, despite this, the Australia Federal Court of Appeal decided that a valid patent would be sustained in the absence of novelty when it dealt with this exact question in 2011 in Albany Molecular Research Inc v Alphapharm Pty Ltd (2011) FCA 120.

The case deals with chemical molecules and involves regioisomers, which are a type of isomer. Isomers are groups of chemical compounds that have exactly the same chemical formula, but different geometric structures.

Relevantly, it is often the case that a synthesis reaction intended to produce a particular compound which exists in the form of different isomers will necessarily result in a mixture of the different isomers, not all of which will be useful or desirable.

Therefore the question put to the court was as follows;

Albany Molecular Research Inc (‘AMR’) is the patentee of Australian patent no. 699799, which essentially claims fexofenadine compounds, and more particularly one specific pharmaceutically-effective regioisomer of those compounds.  Alphapharm Pty Ltd, (the respondents), manufacture and sell generic pharmaceutical products in which the active ingredient is fexofenadine hydrochloride.  It was not disputed that if the claims of AMR’s patent were valid, then the respondents’ products would infringe.

The AMR patent specification discloses, and claims, methods to prepare the desired fexofenadine regioisomer in a substantially pure form.

The claims to the methods were not in dispute, but the patent also includes claims directed to the resulting substantially pure compounds themselves (‘compound claims’).

The ultimate question in the case was whether a claim to a compound can be deemed valid when the compound is theorised in the prior art, but not known to exist, or have been produced, in an isolated form?

The court found that the claims, while not being novel, were indeed inventive, which resulted in the patent being deemed valid.

The reason for the apparent loop hole is the anticipation concept, stated differently the disclosure of a concept or the presence of an idea or the explanation of a theory.

The existence of the particular isomer had previously only been a theory. The laws of chemistry state that if a particular isomer has a central carbon atom connected to four different molecules, there will be a non-superposable mirror image, and hence each compound is therefore designated as either the L-isomer or the R-isomer. Whether any person had ever been able to isolate or recover or physically create a particular R or L isomer is irrelevant, the theory states that if one exists, so should the other.

What it all means, is that the novelty is anticipated by a theory, based on the relevant laws. The novelty is not destroyed by the actual physical presence of the isomer, it is destroyed by its theorised existence, the ‘paper anticipation’. A ‘paper anticipation’ of this nature will affect the drafting of specifications for patents of the molecular kind. More specifically, a ‘patent application’ of this nature should highlight the distinction that it is not the product to which a claim is made, but the method to obtain that product.

It is yet to be seen whether the decision of the full bench appeal in the Australian courts will be supported elsewhere. What may be said however is that a patent application dealing with chemistry, molecules, microbes, bio-molecules or the like, should identify where the novelty actually lies in the invention and what may or may not be claimed.

Monty Rademeyer – Partner
monty@rademeyer.co.za 

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