Tawanda Mahanzu, a Zimbabwean entrepreneur and inventor (“the applicant”), has approached the Intellectual Property Tribunal of Zimbabwe (“the IPT”) on an urgent basis to challenge the alleged practice at the Zimbabwean Patent Office (“ZIPO”) of excluding certain types of inventions from patentability.
The applicant lodged a patent application with ZIPO on 28 November 2018. The patent application is directed to an invention entitled “Banknote Possession Tracking and Deposit Enforcement Methods”. The invention relates to business processes, implemented by computer systems, for solving the issue of physical cash shortages. The patent specification essentially describes the use of tokens, exchangeable for banknotes and coins, which can be used to track banknote and coin possession.
According to the applicant, soon after filing the patent application, he received a notification from ZIPO that the application had been found to be in order for acceptance and should be advertised in the prescribed manner. He then proceeded to pay the required fee for advertising the application. He is of the view that ZIPO does not conduct substantive examination on patent applications and merely checks whether the formal requirements are met before advising an applicant that an application is in order for acceptance.
In the founding affidavit filed in support of the court application, Mahanzu alleges that, prior to lodging his patent application, he was informed by ZIPO that business methods (among other classes of inventions, such as software and mathematical methods) are not patentable in Zimbabwe. After perusing the governing law, being the Patents Act of Zimbabwe, Chapter 26:03 (“the Act”), he found that the alleged practice is not supported by any provisions of the Act.
The Act defines an invention as follows: “Any new and useful art, whether producing a physical effect or not, process, machine, manufacture or composition of matter which is not obvious or any new and useful improvement thereof which is not obvious, capable of being used or applied in trade or industry and includes an alleged invention.” Unlike the national patent laws of some countries, such as South Africa, Zimbabwe’s Act does not explicitly exclude business methods and software as such from patentability.
For this reason, the applicant argues that a new business method can fall within the Act’s definition of an invention, as set out above, and his urgent court application seeks to challenge the alleged exclusion of business methods on the grounds that such an exclusion would be both unlawful and unconstitutional. More specifically, it is alleged that this practice has no legal basis (i.e., ZIPO would be acting ultra vires when excluding these types of inventions) and infringes several constitutional rights, such as the right to lawful and reasonable administrative conduct, the right to property and the right to choose and carry on any profession, trade or occupation.
Mahanzu believes that the phrase “whether producing a physical effect or not”, which forms part of the definition of an invention in terms of the Act, shows that abstract ideas (e.g., pure business methods) are not barred from patentability and relieves examiners from the burden of having to determine the boundary between abstract and non-abstract ideas, e.g., by considering factors such as a possible “technical effect” brought about by an invention.
The applicant has requested the IPT to suspend ZIPO’s alleged practice of applying subject matter exceptions that are not provided for in the Act and to declare the practice to be unlawful and in breach of his constitutional rights.
The Controller of Patents, Trademarks and Industrial Designs (“the Controller”), who is cited as one of the respondents in the court application, is opposing the application. Essentially, the Controller believes that the applicant is misinformed as to ZIPO’s practice. The Controller denies that ZIPO has acted ultra vires and contends that it has always acted within the bounds of the Act when processing Zimbabwean patent applications. In the relevant opposing affidavit, the Controller states that Mahanzu’s allegations regarding patentability exclusions are not accurate and are based on non-authoritative sources concerning ZIPO’s practice.
Additionally, it appears that ZIPO’s version of events differs materially from Mahanzu’s version. The Controller alleges that the applicant actually failed to pay the required advertisement fee and that the application was therefore deemed to be aborted. Accordingly, the Controller argues that the applicant has not been given any decision as to the patentability of the invention and cannot conclude that ZIPO does not substantively examine patent applications.
At the time of writing, the IPT had not yet delivered a judgment in the matter. We are following the matter with interest and will report on any further developments as they arise.
Hugo Biermann | Patent Attorney