Audio Transcription of Interview on Classic FM on 18 September 2006 ; Patents

TONY BLEWITT:

Once again on Classic Breakfast we’re talking intellectual property in actual fact we’re talking patents today. My guest on the phone this morning, Keith Brown from Spoor & Fisher, a partner there. Keith, good morning.

KEITH BROWN:

Good morning Tony how are you doing?

TONY BLEWITT:

Fine thanks, once again welcome to Classic FM. Now the question has been sent through for today’s piece from Spoor & Fisher is actually as follows – two totally independent people, two thousand kilometers apart have a problem, design a machine to ease the problem. OK now. They don’t know each other, nor know what the other is doing. They both want to patent and register their product. As fate has it both products look identical, operate in an identical fashion, only one person apparently can register and patent his product. How do you determine who gets the patent and who looses. The winner I understand can go further and register the idea as well, preventing the loser to change the design as a competitor … to become a competitor in the market. It is a serious issue I could never find anyone to help me out on this one. This is the question, have you, can you give me an answer to that question?

KEITH BROWN:

Well Tony, there are some complications to it, but I think at the end of the day one could summarise it best in a very generalised way by saying that the person who gets to the patent office first will generally have the dominant rights. It is conceivable just by way of example that if two people were to file a patent application on the same day for the same invention they could both end up with valid patent rights. So it is in fact quite conceivable that two people could have patent rights which overlap one another and neither one of those patent rights would upset the other because in general a patent is granted for something which is new and if the patent is filed on the same day then the other one can’t be considered not new in the light of that one, in other words one patent can only anticipate another one if it is filed earlier on.

TONY BLEWITT:

OK.

KEITH BROWN:

It is a highly unusual situation, one can imagine that two people would get to the patent office on the same day but it has happened and in fact I have had personal experience of that and we were able to use this particular aspect of the law which I am telling you about to the advantage of my client. I do point out that what I’ve said really is in very general terms and that it applies primarily in what we refer to as first to file countries. In other words, countries where the person who gets to the patent office first is the person who has the dominant rights. As usual there are exceptions to that and the United States is one very notable exception. In the United States it is the person who invents the invention first who has the rights even if he files his patent application later on. As you can imagine that gives to rise to quite a lot of conflicting patent rights referred to as an interference at the US Patent Office where one person perhaps invents first and files second and the other person invents second and files first and you can have quite a merry fight about who will actually end up with the patent rights in those situations.

TONY BLEWITT:

OK.

KEITH BROWN:

There are further complications which arise particularly, you’ve mentioned these people are two thousand kilometers apart. If they are in different countries and file patent applications in different countries, possibly even on separate days, depending on how they then further their patenting activities, it is again conceivable that both of them could end up with valid patent rights.

TONY BLEWITT:

Ok, because in that case it just occurs to me now that possibly one person could go for a local i.e. the country that they are in patent, someone else could go for a worldwide and pay more for that and I would imagine there is an opportunity to do a deal whereby the person with one country can then sell that territory to that other person.

KEITH BROWN:

I think yes, that would be feasible. A rather unusual situation because the person who has extended his rights to a number of countries if he were interested in the country where the other fellow was he would have filed there in the beginning and wouldn’t then want to be pushed into a corner by that chap saying oh well I’ve got a patent and now you can buy it from me. But you know I think the bottom line in all of these things is that there are complications and the circumstances and facts always differ from case to case. So you know the best thing really in the event of a conflict like this really is to take some professional advice from a patent attorney. It is very difficult to sort of generalise and still give an answer for every case. Each one is going to be different.

TONY BLEWITT:

OK. Thank you very much indeed. Keith Brown on the line from Spoor & Fisher. Thanks very much indeed Keith.

KEITH BROWN:

Thank you Tony.

TONY BLEWITT:

Don’t forget to keep sending your questions in to us on the website www.classicfm.co.za and the people that we choose to use their questions they go forward to the competition. We’re talking about a five CD set, the music of Felix Mendelssohn, www.classicfm.co.za and we’ll talk again, more intellectual property with Spoor & Fisher next week.

Keith Brown

Spoor & Fisher

Date published: 2006/09/18
Author: Keith Brown

Tags: audio transcript classic fm patents