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Patent pending

What the developer needs to know before applying for patent protection.

Elaine Bergenthuin
By Elaine Bergenthuin, managing partner at De Beer Attorneys.
Johannesburg, 09 Nov 2016

Software and mobile applications are booming global industries. Market research has indicated 17.7 million South African adults access mobile applications on their smartphones on a regular basis. It is estimated the global mobile application industry will double in size to $101 billion by the year 2020.

Patenting software is a controversial topic that has been contested by many well-known individuals. Tesla Motors CEO Elon Musk has garnered wide acclaim for his open source policy. What it means is Tesla's source code is freely made available to the public and is free to be used and exploited without any risk of the user facing an infringement action. Musk famously said: "Applying the open source philosophy to our patents will strengthen, rather than diminish, Tesla's position..."

Microsoft holds a completely different view. Bill Gates' famous statement on the topic reads: "The solution is patenting as much as we can. A future start-up with no patents of its own will be forced to pay whatever price the giants choose to impose. That price might be high. Established companies have an interest in excluding future competitors." His view is that a strong patent portfolio is the cornerstone of a successful business.

All mine

It is hard to dispute the fact that intellectual property rights are advantageous to an owner, as it provides the owner with an exclusive monopoly, which can be enforced against an infringing third party. Not only does intellectual property provide clarity in terms of ownership, but it is also generally regarded as a form of property, which can be sold and/or licensed to third parties.

The form of intellectual property right that is ordinarily applicable to software is copyright. In this regard, copyright is generally applicable to the actual code developed and is limited to the programming language and syntax used in the code. However, copyright is the only form of intellectual property that is not registrable. Copyright subsists automatically once a work (the software code) is reduced to a material, tangible form.

The patentability of software has never been examined in SA by way of legal or court processes.

In contrast, a patent ordinarily protects the functionality or concept behind the software code. This form of intellectual property is not limited to the programming language or syntax used in the code, and applies to the general, over-arching idea behind the code. This form of protection is therefore much broader than copyright. As it is a registered right, it is also much easier to prove and more easily enforceable than copyright.

Advice from abroad

However, in accordance with the South African Patent Act, a program for a computer as such is normally excluded from patentability. That being said, the patentability of software has never been examined in SA by way of legal or court processes. However, South African courts have, in the past, accepted evidence of the European and UK approaches when it comes to determining software patentability. In terms of the approach followed in these countries, the software sought to be patented should solve a technical problem and there should be some technological advantage to the software. Should this software meet these requirements, it may still be eligible for patent protection in SA.

It is also worth noting that South Africa is a non-examining jurisdiction. What this means is a patent application filed in SA will not be examined to determine whether it meets the software patentability requirements, and will proceed to acceptance and grant once all the formal requirements have been met. In this regard, should a third party try to challenge the validity of a patent in court, the onus will be on the third party to prove it does not meet the requirements and is not valid.

Irrespective of the differing views on the software patentability debate, I end with these words by the famous American computer scientist, Alan Kay: "The best way to predict the future is to invent it."

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