The patent wars: a lawyer’s perspective

[By Don MacRobert]

The Economist recently commented on the US$12,5bn bid by Google to acquire Motorola Mobility, the search giant’s biggest-ever deal. The magazine noted that the attraction for Google is not principally Motorola’s 19 000 employees, or even its 11% share of the US smartphone market, but rather its armoury of 17 000 patents.

Google has about 2 000 patents of its own and buying the Motorola ones will strengthen its position in current and future legal battles with its more heavily armed industry rivals.

The Times of London recently said that “each side has to build its stockpile [of patents]. You have to have as many weapons — or patents — on your side as your foe.”

This rush by Google is part of an effort to protect its Android operating system software (and the handset manufacturers that use it) and to guard against lawsuits like the Apple one that sent Samsung reeling in the European Union.

All this is good reading material for a lawyer, but in SA a patentee is not helped all that much. SA is a “non-examining country” when it comes to patents, which means that, provided all the forms and revenue stamps are correctly applied, a patent can be obtained without scrutiny. There is no guarantee as to validity of patents registered here. Indeed, a registered patent in SA could be open to attack on the grounds that it is invalid because it does not comply with the strict provisions of section 25 of the Patents Act, which says that in order to be registered as a patent, an invention must not have been known, worked, used or described anywhere in the world.

This means the invention must not have been described in any trade journal or on the Internet, for example. Much work has to be done by an SA patentee to ensure the validity of a registered patent.

What often happens is that SA patentees start building up a stockpile of patents. They do so with the full knowledge that their patents may not all be valid. But they do that to build up an armoury to ward off potential copycats.

So, in the first instance, it would seem there should be a complete overhaul of the SA patent system to make it attractive and workable. This may mean the introduction of an examining system.

It may be even better to have a self-examination process as part of an applicant’s submission — before a valid registration can be obtained. Here, a search result would have to be produced to show the validity of an application. This is a far-reaching proposal, but it may serve to sort out the multiplicity of applications being filed to build up patent stockpiles.

Building of such stockpiles is, of course, unfortunate as it takes away, to a large extent, the original thinking behind the Patents Act, which was written to help entrepreneurs profit from good ideas, giving them a 20-year monopoly in return for a full disclosure of the invention.

The idea was to stimulate creativity. Patent protection led very clearly to improvements during the Industrial Revolution in England and elsewhere.

One has seen the pharmaceutical companies gaining much mileage from blockbuster products for which they obtained patent protection — examples include Losec, Tagamet and Myprodol.

But it seems as if the original purpose of SA’s Patents Act may now be abused with the multiplicity of patents being filed and obtained, especially in the software field. The concept of building up stockpiles of patents would seem to take the basic philosophy of the patent system too far from its origins.

What should happen, rather, is a complete overhaul of the global patents system. In the first instance, genuine recognition should be given to patents that are obtained for computer programs, and IT systems in general, and also business methods could be protected.

However, there should be a strong caveat in that there must be a general tidying up of the examination procedure, especially by people who clearly know and understand what IT is about. It is sometimes unfortunate that an examiner in an official office may one day have to deal with a pharmaceutical preparation and the next with a new mechanical device and then an IT product when the examiner may not be fully versed in modern technology and trends.

Strict criteria should be laid down for examination processes. In SA, as a non-examining country, we should use the services of, for example, specialist departments at the CSIR to assist with the examination process. This may add to the cost of patent applications, but would certainly help confirm their validity.

  • Don MacRobert is intellectual property (IP) lawyer at Edward Nathan Sonnenbergs

Share this article

  • http://www.qedsolutions.co.za Dirk de Vos

    Stepping back a bit, it seems that the whole system of patents as they currently exist threatens to collapse under its own weight.  The Google/Motorola transaction’s justification merely follows the same sort of reasoning as the failed Google/Nortel Networks auction bid.  The current system of patents was designed or put in place to serve the needs of a long bygone era.  Recently, outside OR Tambo airport, a billboard for one of the Audi models, carried the strapline with words to the effect of “Has more patents than the Apollo Space Programme”. When a manufacturer of a car (with a maximum 7 year lifecycle) makes that sort of claim, it says more about the current state of patent law than anything about the consumer product advertised. 

    Patents along with other mechanisms collectively referred to Intellectual Property (although IP is not property, just an exclusive right for a period) are supposed to serve both the inventor, extending a monopoly right to exploit his/her invention; and society at large which benefits from new inventions and innovation.  Increasingly, none of these objectives are being served.  The thicket of existing (mostly junk) patents in say, telecoms dissuades new comers and favours the (generally) large incumbents. It is like arriving late as a player at the end of a Monopoly game.  Moreover, the increasing expense of registering a patent takes out a whole section of “garage” tinkerers. The emergence of patent trolls, those who buy up patents simply to disgorge money from those in inadvertent breach of a patent is another warning sign of a system that is no longer workable or frankly beneficial. At some point, large sections of people (or whole jurisdictions) will simply ignore the whole system. An that would be a pity because there is much that is salvagable.

    What we should aviod is tinkering with our system, more especially introducing examination of patents on registration.  We don’t have the available skills for this and those with the skills (patent attorneys) are charging huge fees already.  We should instead think of having variable time periods – biotech, with its long and expensive development lifecycles should have longer patents than electronic componentry (or other areas where Moore’s law applies).  What should absolutely be avioded is extending patents to business processes. If software is to be included, then it must be specifically excluded from copyright.

  • anon

    Dr Kelso’s doppelganger 

Why TechCentral?

We know that as a prospective advertiser, you are spoilt for choice. Our job is to demonstrate why TechCentral delivers the best return for your advertising spend.

TechCentral is South Africa’s online technology news leader. We don’t say that lightly. We believe we produce the country’s best and most insightful online tech news aimed at industry professionals and those interested in the fast-changing world of technology.

We provide news, reviews and comment, without fear or favour, that is of direct relevance to our fast-expanding audience. Proportionately, we provide the largest local audience of all technology-focused online publishers.

We do not constantly regurgitate press releases to draw in search engine traffic — we believe websites that do so are doing their readers and advertisers a disservice. Nor do we sell “editorial features”, offer advertising “press offices” or rely on online bulletin-board forums of questionable value to advertisers to bolster our traffic.

TechCentral, which is edited and written by award-winning South African journalists, cares about delivering top-quality content to draw in the business and consumer readers that are of most interest to technology advertisers.

We’d like the opportunity to demonstrate the value of directing a portion of your advertising budget to TechCentral, whether your company is in the technology field or not. Numerous opportunities exist for companies interested in reaching our audience of key decision-makers in South Africa’s dynamic information and communications technology sector. We offer packages that will deliver among the best returns on investment available in the online technology news space.

For more information about advertising opportunities, and how your organisation can benefit by publicising itself on TechCentral, please call us on 011-792-0449 during office hours. Or send us an e-mail and ask for our latest rate card and brochure.