A patent lawyer is a lawyer who has the qualifications that are necessary for representing clients in obtaining patents and for acting in all matters and procedures relating to patent law and practice. In order to become a patent lawyer in South Africa, an attorney must have not only his Law degree, but also an engineering or science degree, and must have completed and passed the examinations set by the South African Institute of Intellectual Property Law in Johannesburg.
Once he or she has these three qualifications he or she may call himself or herself a patent lawyer. The reason for the science or engineering degree is because patent lawyers must be able to interpret and fully understand the description and accompanying technical drawings that must be supplied to the Patent Office as part of a patent application.
On passing the Institute’s examinations a patent lawyer becomes bound by a code of ethics that is administered by the Institute.
What are the steps needed when applying for a patent? Firstly a search has to be made for prior art – what this means is that the patent lawyer has to make a search of patent databases over the entire world as well as searching printed and published matter in order to ensure that the invention that is to be patented is, in fact, new. In South Africa this Novelty search is an absolute necessity.
At this stage the owner of the invention must fully understand that any disclosure regarding his invention is liable to nullify the “prior art” clause. It is very possible for an inventor to destroy the novelty of his invention by a piece of idle chat to his wife.
Although it is possible for an inventor to file the application for a provisional patent himself, it is always better to file using a patent lawyer. This is because a patent lawyer has to know the Patent Act backwards – that’s his job. If it passes the stringent tests demanded by the Patent Act and is granted a patent, its owner must apply for a full patent within twelve months – this application has to be made through a patent lawyer.
A patent lawyer is also able to give an inventor sound advice as to whether the invention shows inventiveness. The invention must pass the test of obviousness – that means that the invention must not appear to be obvious to someone who is skilled in the art of the invention – if it is obvious then a patent will not be granted.
A number of large corporations have been filing applications for patents for software in recent years. This is a very grey area at the moment – the law has been changed in the United States to accommodate these applications, but new legislation was thrown out by the European Parliament in 2005.
At present the law has not been changed in South Africa and it is absolutely necessary to arrange to see a patent lawyer if you have any queries regarding the present state of the law, or indeed if you have any queries regarding any form of intellectual property proptection.
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