Failure of patentees to have regard to the nuclear energy act could be fatal
7/09/2011

The SA Patents Act does not specifically exclude inventions relating to nuclear energy from patentability. However, the SA Nuclear Energy Act (“NEA”) sets out a number of procedural steps in section 41 that must be complied with when applying for a patent in South Africa relating to nuclear energy or related subject matter. A patent granted contrary to the provisions of section 41 will result in the patent having no legal effect.

In summary, section 41(1) states that an applicant who lodges a patent application relating to the production or use of nuclear energy, or the production, processing or use of nuclear material or restricted matter, must-

(a) immediately notify the Minister of Minerals and Energy in writing of that application;
(b) furnish the Minister with a copy of the specification relating to the invention; and
(c) provide the Minister with any other information regarding the invention that the Minister may require.

The Minister will then study the application to determine whether or not it should be refused in terms of section 41(5). Section 41(5) states that the Minister may: refuse the grant of a patent for an invention, should the granting of a patent be against the interests of the security of the Republic; or refuse, or conditionally allow a patent to be granted, should the normal grant of a patent be found to be contrary to the Republic's obligations in terms of the Nuclear Non-Proliferation Treaty, the Safeguards Agreement, or in terms of any other agreement of that kind between the Republic and any other state or any international or multi-national nuclear agency or institution.

As mentioned above, section 41(1) applies to any patent application which relates to “the production or use of nuclear energy, or the production, processing or use of nuclear material or restricted matter".
In accordance with the definitions set out in the NEA:
• nuclear energy” includes all energy released by a nuclear fission or nuclear fusion;
• ““nuclear material” means source material and special nuclear material;
• “restricted matter” means any or all of the following:
o source material;
o special nuclear material;
o restricted material;
o uranium hexafluoride (UF6);
o nuclear fuel; and
o nuclear-related equipment and material.

The application of section 41(1) is therefore quite wide and it may sometimes be difficult to determine whether or not a specific patent application falls within the ambit of this section. However, the result of noncompliance is clear. Section 41(8) states: “A patent granted, contrary to the provisions of this section, with regard to an invention mentioned on subsection (1), will have no legal force or effect whatsoever.”
Another point of concern is the fact that the Minister must be “immediately” notified in writing of the patent application (sec 41(1)(a)). The question now for patent practitioners is how much time they have to inform the minister of the application. Must he be notified on the same day of filing the application, within a few weeks thereof, or can it be filed at any time during the pendency of the application (i.e. before acceptance)? In a working environment where numerous patent applications are filed on a daily basis, many of which have imminent filing deadlines, it is difficult to send out these notices on the same day as filing the applications. However, it is strongly recommended to send out the notices as soon as possible after filing.

It is therefore critical for patent practitioners to keep the provisions of section 41 of the NEA in mind when prosecuting patent applications in South Africa, since failure to do so could be fatal to their client’s application.

Danie Pienaar
Candidate Patent Attorney
Patent Department
danie-p@adamsadams.co.za