South African Companies Face Growing IP Risks Around Secretly Used Commercial Processes

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Manufacturing efficiencies, chemical pathways, and production methods are often preserved as trade secrets for decades and can confer durable competitive advantage. However, the later involvement of partners, collaborators, or other downstream actors introduces the risk of trade secrets falling into the public domain.

Understanding how South African patent law intersects with trade secret processes, whether by design or by circumstance, is integral to developing commercial strategies and ascertaining business risk. At this intersection arise complex questions relating to the protection of IP, particularly around secrecy, entitlement, and validity.

Can a secretly used process be patented in South Africa?

Under South African law, a patentable invention must be novel (new). Novelty is assessed against a body of “prior art”, which includes not only publicly available information accessible anywhere in the world, but also inventions that have been used secretly and on a commercial scale within South Africa.

The implications for local businesses are clear: a process that has been commercially exploited secretly within South Africa becomes unpatentable in South Africa, regardless of whether the details were ever publicly disclosed. From a strategic perspective, this highlights the importance of understanding how and where a process is used prior to considering patent filing.

Can a process used secretly outside South Africa be patented?

By contrast, the more complex and legally significant issue, central to this analysis, is whether a process used secretly outside South Africa is patentable in the Republic, where the product of the process is made publicly available, for example by sale, whether in South Africa or elsewhere.

Put more broadly, it is an important question whether the commercial sale of a product amounts to enabling disclosure of the secret process used to make it. Unlike products, whose features may often be identified through analysis, processes may remain obscure even where their outputs are visible and widely distributed. South African courts have not yet considered the issue.

The courts have made it clear, however, that prior art will only destroy novelty if it amounts to “an enabling disclosure”; it must enable a person skilled in the art to make or carry out the relevant invention.

The courts have said that the prior art must “plant the flag at the precise destination of”, rather than offer a mere “signpost” on the road to, the invention. This standard is particularly significant for method and process claims.

On first principles, the inquiry, as to whether the publicly available product is novelty-destroying of the secret process, turns to enablement. If a skilled person can determine the process by analysing the product – through reverse engineering or routine testing – the sale of the product may well constitute an enabling disclosure of the process. If not, the product discloses no more than the outcome, leaving the process undisclosed and potentially novel.

The answer is highly fact-dependent but carries enormous commercial significance. It determines whether a process can later be patented, whether third parties, including collaborators of the original innovator, can do so, and whether subsequent product sales expose a business to infringement risk.

An infringement paradox

South African patent legislation provides that a patent for a process extends, for the purposes of infringement, to products made by that process. This statutory extension exists to address this: short of corporate espionage, there are significant evidentiary challenges in proving infringement by processes carried out behind closed doors.

Importantly, however, from a commercial perspective, the provision gives rise to an apparent paradox: a process may be held novel because its publicly disclosed product does not “plant the flag at” the process, yet exploitation of that same product may later constitute infringement.

For example, a seemingly unreasonable scenario may arise where a business sells a product openly for years, made by its trade secret process, only to discover that a past collaborator or third party has filed for and holds patent rights over the process used to make it. Even if the product itself is not explicitly patented, its manufacture or importation could trigger infringement exposure.

By contrast, and to add further complexity, there exists the maxim, "that which infringes if later, anticipates if earlier". On the one hand, this principle has received authoritative approval by the SA courts as a test for novelty.

On the other hand, this test for anticipation has been criticised on the basis that it incorrectly conflates the rules governing the determination of novelty with the rules governing the determination of infringement.

Critics caution against this mistaken shortcut in assessing validity: the assumption that if selling the product later can infringe a process patent, then selling that same product earlier must necessarily disclose, and thereby destroy the novelty of the process.

Comparative perspectives – foreign jurisprudence

European patent law provides a developed, pragmatic framework for these issues: a process is considered novel if it cannot be determined through analysis of the product obtained directly by that process.

Where reverse engineering is not possible, public disclosure of the product does not destroy the novelty of the process. A similar approach is followed in other jurisdictions, including China, Japan and South Korea.

South African courts often regard European authority as persuasive, and given the emphasis placed in South African law on enablement, it is likely that a comparable approach would be adopted should the issue arise before the courts.

In contrast, the United States has clearly defined and relatively recent case law which provides that the prior sale of a product manufactured by a "secret" process bars the patenting of that process, if the sale happened more than one year before the filing of a patent application.

Trade secrets: Value and risk

A process that has remained confidential over many years, notwithstanding the widespread sale of its products, is indicative that it cannot readily be reverse engineered. This, in turn, supports the proposition that product disclosures are non‑enabling.

It also sends a strong message: the real competitive advantage lies in how something is made, not merely in what is made. From a commercial perspective, this highlights the value of strong confidentiality measures, not only as a means of protection, but also as potential evidentiary support in the event of patent disputes.

While trade secrets offer immediate protection without the need for disclosure, they can create latent risks when patent activity emerges later. A process that remains secret but undocumented, or whose inventorship is unclear, can become vulnerable, particularly if a collaborator files a patent.

This is where entitlement issues arise. Many process‑based innovations emerge from collaborations and without careful contractual structuring, ownership of inventions and the concomitant right to file patent application can become unclear.

If a collaborator files a patent application claiming a process it did not independently develop, that patent may be liable to be revoked, notwithstanding that the process is held to be novel (ie. where product disclosures are non‑enabling).

Grounds for revocation may include that the patent was granted in fraud of another’s rights, that the applicant was not entitled to apply, or that material misrepresentations were made regarding inventorship or ownership.

However, this legal fragility does not always translate into immediate commercial safety. Challenging a patent requires time, resources and strategic appetite.

Several practical lessons

• Map your process usage geographically. Secret commercial use in South Africa may limit or even destroy future patenting options.
• Assess reverse‑engineering risk early, and revisit this as products, markets, and analytical techniques evolve. The easier the process is to uncover, the weaker its value as a trade secret.
• Document inventorship and ownership rigorously. Informal development histories can become costly later.
• Align trade secret and patent strategies. These tools are complementary, not at cross‑purposes.
• Anticipate downstream patent filings, particularly where partners or collaborators are involved.

Process inventions occupy a nuanced intersection between secrecy and disclosure. While South African law provides some framework, it does not have all the answers.

Until legal clarity emerges, businesses that rely on process-driven advantages should take a proactive and strategic approach – both in safeguarding trade secrets and in structuring patent applications.

Doing so is critical to preserving long-term competitive advantage.