PATENTS

In South Africa, a patent may be granted for any new invention which involves an inventive step and which is capable of being used or applied in trade, industry or agriculture.

The abovementioned requirements in obtaining a patent for an invention are for the most part universal, in that most countries have the same uniform requirement for its patentable subject matter, with minor deviations in some countries, which are:

  • Novelty;
  • Inventiveness; and
  • Capable of being used in industry.

The definition of a patentable invention in South Africa is one of a negative nature. In other words, the South African legislation pertaining to patents does not provide a definition of patentable inventions, but rather stipulates certain inventions which are not patentable.

Accordingly, an invention, in South African intellectual property law, can be anything which is not contained in the list of exclusions in terms of the South African Patents Act, 57 of 1978.

An invention can therefore be anything from a mechanical machine or a composition of matter to a method, process or chemical compound.

In order to obtain patent rights in South Africa, an application for a patent must be filed at the patent office. A patent mainly consists of a patent specification, which is document that describes the invention.

In South Africa, there are four forms of patent applications, namely:

  • A patent application accompanied by a provisional patent specification (Provisional Patent Application);
  • A patent application accompanied by a complete specification (Complete Patent Application);
  • A patent application filed in terms of the Patent Cooperation Treaty (PCT) (referred to as a PCT patent application); and
  • The subsequently filed national phase application in terms of the PCT.

A granted patent is valid for 20 years from date of filing the complete specification. This entails that the owner of a patent is granted an exclusive legislative right to manufacture, exercising, disposing or offering to dispose of or implement the invention in South Africa so that he/she/it shall have and enjoy the whole profit and advantage accruing by reason of the invention.

Provisional Patent Application

The main purpose of filing a provisional patent is to secure a priority date for the invention in order to limit other novelty destroying matter or inventions that might have been created or patented. A patent’s novelty and inventiveness will be judged against the provisional filing date. Anything created before such priority date may be considered to the detriment of the invention’s ability to fulfil the formal requirements.

A provisional patent application is only effective of a period of 12 months and cannot mature into a granted patent without the filing of a further application, being either a complete patent application or a PCT patent application.
Some amendments from the provisional application to the complete application are allowed, however, the provisional patent application should sufficiently describe the invention to the extent that it is clear from both applications that they pertain to the same invention.

In addition, in order to utilise a South African provisional patent application as a priority application in foreign countries (if the foreign countries are parties to the Paris Convention), the provisional patent application must meet the formal requirements of the foreign countries’ patent legislation, which normally stipulates that the provisional patent application must contain a comprehensive description of the invention.

Complete Patent Application

A complete patent application is the final version of the invention and ultimately contains the full and final description of the invention for which a patent is granted.

A complete patent application may be filed in the first instance, or it may be based on and claim priority from an earlier South African provisional application or from an earlier South African complete patent application which does not contain a claim to priority.

Alternatively, in cases pertaining to inventions that have been invented in a foreign country, and that country is a party to the Paris Convention, the complete patent application may claim priority from an earlier patent application filed in that foreign country.

A complete patent application claiming priority from an earlier application filed in a convention country is referred to as a convention application.

A complete patent application must sufficiently describe the invention as well as the manner in which it is to be performed in order to enable a person – skilled in the art of the invention – to perform or reproduce the invention and must end with one or more claims defining the invention for which protection is sought.

In most cases, in which the validity of an invention is considered, the wording of the claims decides the outcome. Therefore, it is extremely important that the claims are drafted with care by qualified professionals.

The South African patent office is not an examining patent office as of yet and therefore no substantive examination will be executed on the merits of a patent application in South Africa. A patent will be granted merely by satisfying the formal requirements (fees, prescribed forms, necessary documentation etc.)

The South African Patents Act provides that a complete patent application must be accepted by the patent office within 18 months from the date of application in South Africa. Furthermore, it provides that a national phase application must be accepted within 12 months from date of application in South Africa, unless an appeal has been lodged in respect of such application.

Once a patent has been accepted, notice of acceptance is given to the applicant by the Registrar. The applicant must then advertise the acceptance in the Patent Journal within three months of acceptance.

If no objection is made to the patent application, the patent will be granted by the Registrar by certificate.

Patent Cooperation Treaty Patent Applications (PCT Patent Applications)

This form of patent application is used to file an international patent application (PCT patent application) from countries which are parties to the Patent Cooperation Treaty. These PCT patent applications must be filed within 12 months of the filing of the initial provisional patent application.

The PCT is an international treaty between more than 140 Paris Convention countries. These PCT patent application system makes it possible to obtain patent protection for an invention in multiple countries simultaneously, in a cost-effective manner.

The PCT patent application procedure can be summarised as follows: An international patent application is filed which must comply with the PCT patent application formality requirements.

Thereafter, an International Search Authority (ISA) conducts a search to identify published documents, on a global scale, that may be relevant to the patentability of an invention claimed in the PCT patent application. The ISA will issue a search report, which will contain a list of the abovementioned documents. In consideration of the content and results contained in the search report, the ISA will provide a non-binding written opinion on the patentability of the invention claimed in such PCT patent application.

This written opinion provides applicants with the necessary information to make an informed decision regarding the probability of obtaining granted patents in any one of the PCT member countries.

After the expiration of 18 months after the first filing, the international application is published and therefore open for public inspection.

Thereafter, an international preliminary report on patentability (IPRP) is issued and communicated to the PCT member countries’ respective patent office which requests it.

After an IPRP is issued, the applicant will need to enter the national phase in the PCT member countries in which patent protection is desired.

National Phase Application South Africa

The entering of the national phase in PCT patent applications entails that individual national phase patent applications are filed at the patent offices of each country in which patent protection is sought.

After a PCT patent application is filed, which designates South Africa, and protection is required in South Africa, it will be necessary to enter the national phase in South Africa. To enter the national phase in South Africa, before the expiration of 31 months from the priority date of the PCT patent application, with a possible extension of a further 3 months to 34 months, certain formal requirements must be met as to fees and translation requirements.

Once this national phase patent application is filed, it will follow the same route as the complete patent application. If all the formalities in respect of the national phase application are met, a patent will be granted.

For all IP enquiries, send us an e-mail at IP@barnardinc.co.za or phone (+27)0 861 088 088 and ask to be connected to one of our IP specialists.

Key words:PCT patent applications South Africa.

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