MyPatent.co.za

(Extract from MyPatent’s Patent e-Book)

 

 

Pitfall 6 – do not leave out important information or fail to describe alternative embodiments of your invention in your provisional patent application.

 

 

The consequences of not describing your invention fully are illustrated in the example below.

 

After becoming one of the most popular water sports in the world, windsurfing was awarded Olympic status at the 1984 Los Angeles Games. Unbeknown to the inventors, the validity of their patents was about to be challenged, resulting in the revocation of their United Kingdom patent no more than a year later.

 

The inventors of the windsurfer were James Drake - an aeronautical engineer who enjoyed sailing – and Hoyle Schweitzer - a computer analyst and a surfer. Together, they came up with the concept of attaching a sail to a surfboard, providing the exhilaration of surfing without the need for a wave.

 

 

The first patent application was filed in the US in 1968 and later extended to Australia, Canada, Germany and the United Kingdom. The UK patent, which was granted in the early 1970’s under patent number GB 1,258,317, claimed:

 

A wind-propelled vehicle comprising body means, an unstayed spar connected to said body means through a joint which will provide universal-type movement of the spar in the absence of support thereof by a user of the vehicle, a sail attached along one edge thereof to the spar, and a pair of arcuate booms, first ends of the booms being connected together and laterally connected on said spar, second ends of the booms being connected together and having means thereon connected to the sail such that said sail is held taut between the booms.

 

During subsequent revocation proceedings, previous windsurfers with generally similar configurations (including straight booms that became curved to some degree when sailed) came to light. James Drake argued that the patented windsurfer represented a significant advancement in that the sail adopted the shape of an aerofoil, which significantly improved its sailing characteristics, and that this shape was induced by the arcuate booms. However, the patent merely stated that the arcuate booms provided a grip for the user and to hold the sail tout – a purpose that straight booms would achieve just as effectively – and failed to explain the ancillary, novel function of these booms.

 

Based on this omission, the Court upheld the application for revocation and revoked the patent on the grounds of insufficient disclosure and lack of novelty. South African patent law closely mirrors the law in the United Kingdom with regard to grounds of revocation. Therefore, if registered, any corresponding South African patent would likely have suffered a similar fate.