So, you think you’ve solved the energy crisis with an invention that is novel, inventive and industrially applicable? Clearly the invention should be patentable to satisfy the requirements of section 25(1) of the Patents Act (no 57 of 1978). Or should it?

Perpetual motion machines frequent childhood dreams. It’s a noble quest too – with few people willing to argue that “free energy” will not solve many 21st century problems. Some even believe that inventions of this nature already exist, but are suppressed and derailed by politically connected fossil fuel industry stakeholders.

Generally, it is accepted that any machine that claims to produce more energy than it consumes, is contrary to the laws of thermodynamics, and can therefore be classified as a perpetual motion machine. Patent attorneys are frequently confronted with starry-eyed inventors believing that they have stumbled onto a viable perpetual motion machine – one that will form the basis of their imminent retirement.

These inventions are usually accompanied by a multitude of complex calculations and derivations pointing to a result that almost inevitably seems too good to be true.

The Patents Act no 57 of 1978 makes provision for exactly this eventuality by stating in section 36, that the registrar “shall” refuse any application that is frivolous on the basis of it claiming as an invention “anything obviously contrary to well established natural laws”. Section 61 furthermore provides that any person may, at any time, apply for the revocation of a patent that should have been refused on the basis of the aforementioned section 36.

The Oxford Dictionary defines frivolous as “not having any serious purpose or value”. This clearly indicates that the Patents Act is aligned with the well-known Latin expression “de minimis non curat lex” which, directly translated, means “the law does not concern itself with trifles”.

It is, however, common cause that mankind’s interpretation of what is possible or frivolous had been wrong in the past. Clearly, our understanding of the world is limited by our current knowledge. For example, a person living in the 16th century would hardly have believed it possible for man to set foot on the moon, or to travel between continents by way of air travel. Our view of the possible has thus changed since then, and will in all probability continue to change in years to come.

Are we then actively deterring a broadening of our current understanding of the world? Are our laws written to hamper ingenuity? Is it not exactly mankind’s evolving view of the possible that forms the basis of each new patent application?

The vast number of hopeful inventors attempting to obtain patent protection for perpetual motion machines, none of which have thus far succeeded in disproving the laws of thermodynamics, clearly illustrates the reasoning behind exclusions such as those found in section 36 of the South African Patents Act. In fact, similar provisions exist in most countries and jurisdictions around the world.

In the USA, perpetual motion machines are not patentable on the basis of lacking utility, unless the application is accompanied by a working model, made available to the United States Patent and Trademark Office (USPTO) for the purpose of testing. In the well-known US case of Newman v. Quigg, 877 F.2d 1575 (1989), a patent was refused by an examiner for lacking utility as it claimed as an invention, a machine capable of producing more energy than it consumed. The USPTO Board of Patent Appeals and Interferences affirmed the examiner's rejection by confirming that the invention violated either the first or second law of thermodynamics. Tests conducted on the model revealed that, even though extremely efficient, the machine did in fact not generate more energy than it consumed. The patent was rejected for a lack of utility and enablement.

The same should hold true in South Africa. Clearly, a working prototype should be sufficient to nullify any contention based on frivolity, and the South African application should theoretically succeed (subject obviously to normal requirements relating to patentability).

So, whilst the perpetual motion machine may currently seem either implausible or beyond our generation’s grasp of the laws of nature, it is advisable to spend time, money and effort into building a working prototype, rather than pursuing protection for an unproven concept. Should you, however, succeed in trumping known principles and developing a working and feasible prototype, be sure to keep it a secret until you have consulted with your patent attorney.

Written by Jaco Theunissen, Director and Louw Steyn, Candidate Attorney KISCH IP