By: Herman van Schalkwyk

Learners are introduced to the field of science and technology through science fairs as part of the school curriculum.

A number of South African students recently made headlines following their success at the Intel International Science and Engineering Fair, in Pittsburgh, US. Among them was Chene Mostert, who invented a hydrogen peroxide toothbrush container used for eliminating bacteria on toothbrushes. This is done by placing the toothbrushes in four rotatable tubes to scrub them by manually rotating the tubes. The American Dental Association has extended an invitation to her to return to the US in December to patent her invention.

This is certainly an indication that her invention not only has potential to be a commercial success but is also patentable to give her a 20-year monopoly – or is it?

According to the South African Patents Act of 1978, one of the requirements for valid patent rights is that the invention must be new. An invention is only considered to be new if it does not form part of the state of the art immediately before the priority date of the invention.

Although this sounds like a lot of legal mumbo jumbo, it can be explained quite easily. The priority date can simply be seen as the filing date of the patent application. The state of the art, on the other hand, includes all public knowledge. In other words, it includes all information which has been made available to the public, anywhere in the world, by written or oral description, by use or in any other way.

Considering the novelty requirement, it can be said that an invention is only considered to be new if it was in no way available in the public prior to the filing date of the patent application. This leaves us with a problem, given that inventions presented at science expos are generally described in great detail at these expos before the inventors are advised on the filing of patent applications.

Accordingly, a strong argument can be made that inventions presented at science expos are indeed made available to the public on the date of presentation.

In the normal course of events, a science project, which could potentially be a patentable invention, is presented at a number of expos before it makes it to a major expo, such as the Intel International Science and Engineering Fair. Projects are generally presented at internal science expos, at schools, where the best projects are selected to be presented at a regional or provincial expo. Thereafter, the regional winners are selected to present their projects at national level, where experts in the various fields of technology judge the projects to award national medals to the deserving learners. By its nature, a science expo requires the learners to disclose their projects in detail for them to be judged. After all, the merits of a project cannot be judged without a full disclosure.

From a patentability point of view, this could potentially create a major obstacle to securing valid rights for the inventors. All levels of science expos are open to the public and are generally attended by fellow pupils, parents, professors and professionals from industry, besides others. For example, it has been reported in the media that the inventions at the Intel International Science and Engineering Fair were judged by 1 200 expert judges from all fields of science. Therefore, it would probably be fair to say that, by presenting inventions in detail at an expo, the inventors are making them available to the public.

Considering the novelty requirement discussed above, the inventors will be making their inventions part of public knowledge before any patent applications are filed, thereby destroying the novelty of their own inventions. It is a sad but true reality that most of the young scientists are only advised about securing patent rights after their inventions have been showcased at an expo, at which stage it could very well be too late to obtain valid patent rights in South Africa.

In a country where we encourage – and where we so desperately need – entrepreneurship, this absolute novelty requirement for inventions seems a bit unfair on young science expo enthusiasts, who may, by participating in expos, lose out on the economic advantages of securing patent rights.

However, there are countries, such as Japan, Australia, Canada and the US, that have identified this as a problem and provided some form of exception to the strict absolute novelty requirement for invention first disclosed at international exhibitions or science expos. This exception is generally referred to in the patent world as a novelty grace period. A novelty grace period, typically, is 6 to 12 months from the date on which the invention was first made available to the public and can be seen as a period during which the disclosure is discarded for the purposes of determining the novelty of the invention. In other words, if the inventor files a patent application within the grace period, the novelty of the invention is maintained and a valid patent could still be issued.

While the South African Patent Act does not make provision for a novelty grace period, this concept is by no means foreign to our law, as the Designs Act of 1993 makes provision for a six-month novelty grace period for the filing of an application for a registered design.

According to South African design law, valid design rights could still be obtained for an article which has been made available to the public if the application for the registered design is filed within six months from the date on which the article was first made available to the public.

While it might be possible to obtain valid design rights for products first made available to the public at science expos, it is generally not a satisfactory solution, owing to the limited scope of protection afforded by design rights. Compared with patent rights, registered designs are narrower in scope, as they protect the appearance of an article, as opposed to the underlying inventive concept of an invention, which is protectable by way of patent rights.

A far more satisfactory solution to the patentability problems young scientists face could be to include a similar provision in the Patents Act that would allow them to file a patent application during a novelty grace period so that they could still obtain valid patent protection for their inventions.

The inclusion of such a provision will, hopefully, encourage young entrepreneurs to participate in science expos to obtain publicity for their inventions, while leaving the door open for them to obtain patent protection in their home country.

Young scientists and entrepreneurs have a crucial role to play in our developing economy, and valid patent rights for their inventions could just prove to be the competitive edge they so desperately need to make their businesses a success. But for now, young scientists must be advised to seek professional advice on the patentability of their inventions as soon as possible and must be encouraged to file patent applications to protect their inventions, preferably before disclosing them to the public.

• Van Schalkwyk is an associate at Spoor & Fisher - h.vanschalkwyk@spoor.com