, PLEASE USE THIS DOCUMENT AS A GUIDE ONLY
1. Is there anything from the scenario that would pose a challenge to the granting of the patent,
or if the patent is granted, anything that might lead to the revocation of the patent at a future
date (seeing as how South Africa is a non-examining jurisdiction as far as patents are
concerned).
Novelty and Prior Art
Dr. Dlamini's patent application may face challenges regarding the novelty of the encapsulation
method she developed. The method for encapsulating Nalequorin in lipid nanoparticles is strikingly
similar to the one described by Dr. Brandt in his 2023 publication, where a different deep-sea
luciferase was encapsulated in a similar manner. Despite the difference in the source organism, the
method is functionally the same, which could lead to a challenge concerning the novelty of the
invention. According to South African patent law, for a patent to be granted, the invention must be
novel, meaning that no prior art or public disclosure can anticipate it1 . If Dr. Brandt’s method is
deemed sufficiently close to Dr. Dlamini’s, this could lead to the rejection of the patent due to lack
of novelty2 .
Inventive Step
In addition to novelty, the inventive step of Dr. Dlamini’s method could be questioned. The
encapsulation technique she used is based on the Kaur-Ndlovu Framework, which has already been
described in a previous peer-reviewed article. If this method is considered an obvious extension of
the existing framework, Dr. Dlamini may have difficulty proving the required inventive step, which
is essential for the patent's validity. The combination of known technologies must result in something
non-obvious to someone skilled in the field for the patent to be granted3 . If it is determined that the
method is merely an obvious adaptation, this could invalidate the patent2 .
Public Disclosure
Another issue lies in Dr. Dlamini’s public disclosure of her work. In March 2022, she presented a
paper at the Southern African Marine Science Symposium, where she described Bathysepia luminos
and its photoprotein properties. Under South African patent law, any public disclosure of an
invention before filing a patent application can destroy its novelty. If Dr. Dlamini’s abstract or any
other part of her presentation was detailed enough to allow others skilled in the art to replicate the
method, her invention could be considered disclosed prior to the filing date, potentially making her
patent application invalid4 . If the disclosure is found to be sufficiently enabling, the patent may be
rejected due to a lack of novelty2.
Lack of Examination in South Africa
A significant challenge in South Africa’s patent system is that it operates as a non-examining
jurisdiction, meaning that the patent office does not conduct a thorough examination of applications
for novelty and inventive step. While this can expedite the filing process, it also means that Dr.
Dlamini’s application might not be subject to a detailed review before it is granted. As a result, the
application may initially be granted without a thorough examination, but later face opposition from
competitors or researchers who might challenge the patent on the grounds of prior art or
obviousness5. This lack of scrutiny increases the likelihood of revocation once the patent is
challenged2.
1: (LML4801, Study Guide. Page 22)
2: (J. Syed & C. Anderson, 2021)
3: (LML4801, Study Guide. Page 44)
4: (LML4801, Study Guide. Page 34)
1. Is there anything from the scenario that would pose a challenge to the granting of the patent,
or if the patent is granted, anything that might lead to the revocation of the patent at a future
date (seeing as how South Africa is a non-examining jurisdiction as far as patents are
concerned).
Novelty and Prior Art
Dr. Dlamini's patent application may face challenges regarding the novelty of the encapsulation
method she developed. The method for encapsulating Nalequorin in lipid nanoparticles is strikingly
similar to the one described by Dr. Brandt in his 2023 publication, where a different deep-sea
luciferase was encapsulated in a similar manner. Despite the difference in the source organism, the
method is functionally the same, which could lead to a challenge concerning the novelty of the
invention. According to South African patent law, for a patent to be granted, the invention must be
novel, meaning that no prior art or public disclosure can anticipate it1 . If Dr. Brandt’s method is
deemed sufficiently close to Dr. Dlamini’s, this could lead to the rejection of the patent due to lack
of novelty2 .
Inventive Step
In addition to novelty, the inventive step of Dr. Dlamini’s method could be questioned. The
encapsulation technique she used is based on the Kaur-Ndlovu Framework, which has already been
described in a previous peer-reviewed article. If this method is considered an obvious extension of
the existing framework, Dr. Dlamini may have difficulty proving the required inventive step, which
is essential for the patent's validity. The combination of known technologies must result in something
non-obvious to someone skilled in the field for the patent to be granted3 . If it is determined that the
method is merely an obvious adaptation, this could invalidate the patent2 .
Public Disclosure
Another issue lies in Dr. Dlamini’s public disclosure of her work. In March 2022, she presented a
paper at the Southern African Marine Science Symposium, where she described Bathysepia luminos
and its photoprotein properties. Under South African patent law, any public disclosure of an
invention before filing a patent application can destroy its novelty. If Dr. Dlamini’s abstract or any
other part of her presentation was detailed enough to allow others skilled in the art to replicate the
method, her invention could be considered disclosed prior to the filing date, potentially making her
patent application invalid4 . If the disclosure is found to be sufficiently enabling, the patent may be
rejected due to a lack of novelty2.
Lack of Examination in South Africa
A significant challenge in South Africa’s patent system is that it operates as a non-examining
jurisdiction, meaning that the patent office does not conduct a thorough examination of applications
for novelty and inventive step. While this can expedite the filing process, it also means that Dr.
Dlamini’s application might not be subject to a detailed review before it is granted. As a result, the
application may initially be granted without a thorough examination, but later face opposition from
competitors or researchers who might challenge the patent on the grounds of prior art or
obviousness5. This lack of scrutiny increases the likelihood of revocation once the patent is
challenged2.
1: (LML4801, Study Guide. Page 22)
2: (J. Syed & C. Anderson, 2021)
3: (LML4801, Study Guide. Page 44)
4: (LML4801, Study Guide. Page 34)
