The appropriate scope of property rights in patents

• Pages: 67-91
• Author: Du Bois, M.
• Published date: 24 May 2019
• Date: 24 May 2019

THE APPROPRIATE SCOPE OF

PROPERTY RIGHTS IN PATENTS

 

Associate Professo r, Department of Mercantile Law, Scho ol of Law, University of

South Africa

 

The purpose of th is article is to show that patents give rise to prope rty rights

which are both protected a nd limited by the constitutiona l property clause

(section 25 of the Constitution of the Republic of South Africa , 1996), just like

any other kind of proper ty. In other words, like other categories of propert y,

such as movable or immovable tangible propert y, the scope of patent rights as

delimited by any legislative limitat ions needs to be in li ne with the constit utional

property clause a nd may also be affected by other constitut ional rights. It is

therefore necessary t o restate the rights att aching to a patent to highlight the

property as pects that could be protected by the prop erty clause and indicate

under which circumst ances protection would be suitable. It is a requireme nt

for constitutional proper ty protection that a par ticular propert y interest must

be vested. In the case of patent r ights, there are several requirements t hat must

be met before the property i nterest in an invention becomes vested. For th is

reason, the next section of this a rticle describes the patentabilit y requirements

and the concomitant r ights (and built-in restrictions) that a patent application

and registration provide to t he patent holder.

After this, t he article provides a more detailed explanation of the

constitutional asp ects that surround pat ent rights, including consideration of

the right to proper ty and the right to health(care), particularly where pat ent

rights affect the welfare of user s. It is not possible to consider all possible

constitutional issues i n one article, so some pressing issues were selected.

To demonstrate the working of the constitut ional property clause and other

constitutional rig hts in the context of patents, the compulsor y licence

provisions in the South Afr ican Patents Act and the application of the doctrine

of exhaustion of rights are discu ssed. The compulsory licence provi sions are

subjected to a constitut ional property analysis to demonstr ate the balance that

 LLB LLD (Stellenbosch Un iversity). This article w as first present ed at the Association for Law,

      

the Netherland s. The Unisa School of Law Rese arch and Innovation Fu nd made this visit t o

       

Prof. Dr. Christ ine Godt, University of Oldenbu rg, who inspired me to consid er in more detail

the doctri ne of internation al exhaustion of pate nt rights and its implic ations for this ar ticle. I had

an additiona l opportunit y for comments when th e article was presen ted at the South Afr ican

Association of I ntellectual Prop erty Law and In formation Technology Law Teachers a nd

Researchers C onference in July 2018 at the Universi ty of Pretoria.

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(2018) IPLJ 67

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must be found between the State’s obligation to protect proper ty rights (in this

case the exclusive rights pertai ning to a registered patent) and its mand ate to

promote other human rig hts (for example advancing the right to healthcar e by

use of compulsory licence provisions to m ake affordable essential medicines

more accessible).

 



 

The Patents Act 57 of 1978 governs South African patent law. A patent may

be granted for a new invention involving an i nventive step, capable of use in

trade, indust ry or agriculture.1 If an invention complies with the re quirements

of the Patents Act, a patent is grante d, which entails the exclusive right to

make, use, exercise, dispose of, offer to dispo se of and import products

embodyi ng the invention. 2 Like other intellectual proper ty rights, patent rights

have certain ‘built-in’ restr ictions. The 20-year patent term3 a nd territoriality

limit the extent of the right s granted, 4 so patent rights a re not absolute, just

like other propert y rights. After expiry of the ter m, the claimed invention and

its concomitant technology fal l in the public domain or intellectual commons

and the public can make use of the invention. With pha rmaceutical patents,

this means that gene ric substitutes may be sold (frequently at a lower price)

because the origin al monopoly has lapsed (and the competitor supplying the

generic medicine did not have to spend as much on re search and development

as the patentee). At this point, it must be noted that t he purpose for which

patent rights were origi nally devised was to grant inventors lim ited monopoly

rights in exchange for making t he valuable knowledge available to the public.

This quid pro quo theory ju stifying the limited prop erty rights must be kept in

1 Se ction 25(1) of the Patents Act 57 of 1978. For further read ing on the patent requir ements, see

T Grant ‘Chapte r 5 Patents’ in O Dean an d H Dyer (eds) Dean & Dyer intr oduction to inte llectual

property law (2014) 237-282 at 245-252.

2 Section 45(1) of the Patents Act 57 of 1978.

3 Section 46 (1) of the Patents Act 57 of 1978. See T Grant ‘Chapter 5 Pate nts’ in O Dean and

H Dyer (eds) Dean & Dyer int roduction to intelle ctual property la w (2014) 237-282 at 239, 259.

Law of intellectual

property i n South Africa 2 ed (2016) 357-427 at 390 on the effec t and term of a patent . While other

countries s uch as the United Stat es and select Europe an jurisdict ions provide for the exten sion of

the patent ter m or extension of protection for t he product (through a Suppleme ntary Protection

Certif icate) for products where reg ulatory approva l caused delays in comme rcialisation of

patented prod ucts, South Afr ica provides no such supplem entary protec tion and it would

arguably be u ndesirable to do so: D Cochrane and Y Na icker ‘Extension of patent protectio n’

(2015) Sep Without Prejudice 50.

4 Section 45(1) of the Patents Act 57 of 1978. Territor iality means t hat the patent is li mited in effect

to South Afr ica. See TD Burrell Bu rrells South African p atent and design law 4 ed (2016) para

[1.1], [1.3] –[1.4].

68 South African Intellectual Property Law Journal (2018) 6

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