WHAT IS A PATENTABLE INVENTION ? A patent for an invention

By Faith Azinwi

Patent engineer, head of patent practice

Dayspring Law Firm

E.: faithazinwi@dayspringlaw.com

Intellectual property (IP) is no small matter for many great nations around the world. In the United States of America for example, intellectual property is considered as critical to national security. The strengthening of China’s IP regimes have been part of the state’s strategic planning for several years. But what exactly is intellectual property?

Intellectual property can be divided into two main branches:

• literary and artistic property (copyright and related rights), and
• industrial property (patents, utility models, trademarks and service marks, trade names, geographical indications, industrial design, layout designs of integrated circuits and plant varieties).

As the name implies, industrial property is useful in business or commercial purposes, for example, patents and utility models for certain kinds of inventions applicable to different fields of industry, marks for distinction of sources of goods and services, industrial designs for esthetic creations and so on.

Eureka, eureka! I found it, I found it! This is the phrase which Archimedes of Syracuse (~287 – 212 B.C. ), a Greek scientist, is said to have utterred when he discovered or finally understood what is today known as the concept of buoyancy (the volume of displaced fluid is equivalent to the volume of an object fully immersed in a fluid) expressed in the Archimedes’ principle. The same Archimedes is also known to have developed several concepts, theories and laws in mathematics and physics and several inventions in his lifetime. His story and those of many other scientists and inventors must have inspired several young minds who are curious about how the universe works, to get into the different fields of science, mathematics, engineering and technology. May be some day my name and story would be told for discovering or inventing so and so, they must have thought.

We have come a long way from the ancient times and somehow have developed several media and systems for recognising scientists and inventors. One could easily identify several academic journals for publications in numerous fields of study such as Mathematics, Computer science, Chemistry, Information technology, Biology and what have you. The Patent (a subtype of industrial property) system, is a more recent formal system that in some perculiar way recognises and secures future benefits over a limited term to inventors for their efforts in exchange of sufficient disclosure of their inventions. The economic benefits for inventors and the rest of society cannot be overstated as strong national or regional systems have been associated with high levels of development in countries such as South Korea, China, Japan, United States, Germany, and so on.

The patent system secures short term monopolies to inventors, upon application and delivery of a patent and subsequent payment of annual fees, on their invention. The owner of a patent on an invention can sell his right to exploit the invention, license it or exploit it by his own means and attack countefeiters in court for exploiting his invention without his permission. Although this system is well established and exploited in western countries such as the Americas and Europe as well as Asian countries such as India, China, South Korea and Japan, among others, there is still much to be done on the African continent.

A major hurdle is the fact that little is known about patents or the intellectual property (IP) system in general and especially the organisations or offices in charge of managing IP.

Some Intellectual Property/Patent Offices

The World Intellectual Property Organisation (WIPO) with headquarters in Geneva, Switzerland, administrates international treaties, agreements and conventions (within its mandate) related to intellectual property such as the old Paris Convention for the Protection of Industrial Property, the Patent Cooperation Treaty (PCT) for international filing of patent applications, the Patent Law Treaty and the Madrid Agreement and Protocol for the international registration of trademarks under the Madrid System among many others. There is indeed an international patent filing system for member states to the PCT.

There are national and regional offices or organisations established around the world to administrate intellectual property or different types of IP rights for individual states, a group of member states or both. For example, the European Union Intellectual Property Office (EUIPO) manages matters relating to trademarks and community design within the European Union (EU) while the European Patent Office (EPO) is a regional office that deals exclusively with matters relating to patents. The EPO is a separate intergovernmental institution from the EU. Since June 1, 2023, the EPO administrates the Unitary Patent System for 17 member states alongside the previous European Patent System for 38 member states. The EPO coexists with individual national offices which receive patent applications and grant patents within their individual states.

In Africa, there are two main regional offices in charge of matters relating to industrial property – the Organisation Africaine de la Propriété Intellectuelle (OAPI) with headquarters in Yaoundé, Cameroon, and the African Regional Intellectual Property Organisation with headquarters in Harare, in Zimbabwe. Both of these institutions cover a total of 39 member states in subsaharan Africa.

National IP offices exist in some Subsaharan and Maghrebian countries such as the Democratic Republic of Congo, Morocco, Tunisia and Madagascar. The main legal instrument for industrial property in the OAPI region is the Bangui Agreement revised in Bamako, Mali on the 14^th of December, 2015. It comprises of the Agreement itself and the ten (10) Annexes on Patents for inventions, Utility models, Trademarks and Service marks, Industrial designs, Trade names, Geographical indications, Literary and Artistic property, Protection against Unfair Competition, Layout designs of Integrated Circuits and Plant Varieties, respectively.

The Agreement itself has been ratified since its signature, though two of its Annexes are still to be ratified by the announcement of the Director-General. These are Annexes I and II on patents and utility models, respectively. The OAPI grants regional patents with effect in all its 17 member states. The OAPI does not coexist with national IP offices, rather there exist National Liaison Bodies to the OAPI in each member state in charge of facilitating the transmission of applications to OAPI. A lot more could be said on the OAPI and the Bangui Agreement, but we must move on to an even more pressing issue faced on the continent and especially in the OAPI region which is that of knowing what qualifies for a patent.

In most, if not all, conventions, agreements and laws relating to patents, a patent is well-defined as the title granted for the protection of an invention. And of course in order to have the right to such a title, knowledge of what constitutes an invention is necessary, as well as knowledge of the kind or category of invention which qualifies for a patent and the criteria which must be fulfilled in order to obtain the title.

Non-Inventions or Exceptions to the category of inventions

Let us begin by stating what an invention is not, for the purpose of patent law. It is not uncommon to find scientists as well as non-scientists claim to have “invented” something new. But what they usually mean is, I have discovered a new species, I have developed a new mathematical equation, or I have developed a new method of carrying out scientific research and so on. Unfortunately, or rather fortunately, not every new thing, idea or concept is an invention!

An invention generally refers to an idea that permits a specific problem in the field of technology to be solved in practice (OAPI, 2017). An invention provides a technical solution to a technical problem, as such it excludes:

1. Discoveries, scientific theories and mathematical methods;
2. schemes, principles or methods for doing business, performing purely mental activities or playing games;
3. mere presentation of information;
4. computer programs (which can be protected under copyright law);
5. purely ornamental creations (which can be protected under copyright law and/or as industrial design, as the case may be);
6. literary, architectural and artistic works or any other esthetic creation (which can be protected under copyright law and/or as industrial design, as the case may be).

The above-mentioned subject matters could be referred to as non-inventions and cannot be protected by patents when presented as such. Non-inventions generally lack a tangible technical effect or characteristic that can be applied to a field of technology. Enthusiastic scientists, mathematicians and business engineers may benefit from a certain renown and even promotion by publishing articles on new discoveries, theories, and methods which are purely abstract but could not obtain a patent for these. It would be absurd to have to seek a license from Emmanuelle Charpentier and Jennifer Doudna for the CRISPR-cas9 method of genome editing to be taught to students in Biological sciences or used in research. The authors of elements mentioned in (c) – (f) could benefit from protection granted to literary and artistic creations (works) or industrial designs.

Patentable Inventions

We have established in the previous section that not all new ideas or creations are inventions. In this section we will discover that not all ideas that permit a specific problem in the field of technology to be solved in practice can be the subject of a patent application or can be patented at all.

In general, only a patentable invention (or patentable subject matter) that is, matter which is new, involves an inventive step (non-obviousness) and is industrially applicable is susceptible of patent protection. It is quite understandable that an invention only qualifies as one if it is new. However, the notion of an inventive step is a little more complicated; there must be some proof of an extra genius or effort in coming up with the said invention. If you are going to have an exclusive right over the said invention for up to 20 years, it must be for something that was not obvious to the general public.

The following inventions are not patentable in Cameroon and the 16 other member states of the OAPI:

• inventions whose exploitation is contrary to public policy or morality;
• methods for the treatment of the human or animal body by surgery or therapy, including diagnostic methods;
• inventions having as their subject matter plant varieties, animal species and essentially biological processes for the breeding of plants or animals other than microbiological processes and the products of such processes.

Additional criteria must also be met in relation to the application itself including:

• the unity of invention (one patent application should not contain more than one invention);
• clarity (in order to protect your land, the boundaries of the land area must be clearly defined and demarcated. Similarly a patent application requires clearly defined boundaries using clear and concise language in what is known as “claims”), and
• sufficiency of disclosure (in exchange of exclusive rights over your invention for a limited duration of 20 years, the inventor or applicant is required to divulge or disclose his invention in such a manner that a man of ordinary skill in the field can understand and perform the invention).

Since the very existence of the OAPI, all patent applications were subject to formal examinations in relation to the composition of the application file and the payment of required official application fees. This was followed by a technical examination of the unity of the invention disclosed, validity of claims and classification of the invention.

It is expected that this would change by 1^st January 2025, when the three main criteria of patentability; novelty, inventive step and industrial applicability would also be examined during the technical examination phase. Until then, these three criteria are assumed for all inventions subject to a patent application.

For more information on intellectual property click here, here, here, here, here and here.