Patents

SUBSECTIONS

A patent is a form of protection that provides a person or legal entity with the exclusive rights to manufacture, use, license or sell a concept or invention in the territory where the patent is granted.

For all intellectual property enquiries, kindly contact Stefaans Gerber or Louw Du Toit at stefaans@barnardinc.co.za or louw@barnardinc.co.za or phone (+27) 861 088 088 and ask to be connected to one of our IP specialists.

WHEN SHOULD I REGISTER A PATENT?

If you are the inventor of a new invention which can be used or applied in trade, industry on agriculture and you want to prevent other parties from manufacturing your invention, you can protect your invention by registering a patent.  To do so, however, your invention must fulfil the requirements of patentability.

HOW LONG IS A PATENT VALID FOR?

A granted patent is valid for 20 years. This entails that the owner of a patent is granted an exclusive legislative right to manufacture, exercise, dispose or offer to dispose of or implement the invention, in the region where the patent has been granted, so that he/she/it shall have and enjoy the whole profit and advantage accruing by reason of the invention.

After 20 years, all the information pertaining to the invention will fall in the public domain and other persons or entities may use this information to manufacture or sell generic replicates of such invention.

AGAINST WHOM IS A PATENT ENFORCEABLE?

It is important to take note that a patent is territorial in nature, which means that a patent is only enforceable in the country in which the application for a patent is granted. There are treaties and international systems in place to obtain patent protection in multiple countries, however, an inventor still needs to file in each individual country in which protection is needed.

A patent is enforceable against any third party, albeit a natural person or a legal entity.

WHAT ARE THE REQUIREMENTS FOR A PATENT TO BE REGISTERED?

The requirements for 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, which are:

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

Patents, in most countries, have an absolute novelty requirement, which means that an invention is only patentable if it is new in the entire world. The Patents Act stipulates that an invention shall be deemed to be new if it does not form part of the state of the art immediately before the application date of the invention.

To elaborate, according to the Patents Act, the state of the art shall comprise all matter (whether a product, a process or information to either) which has been made available to the public by written or oral description, by use or in any other way.

The Patents Act, however, provides some exceptions to the rule.

  • INVENTIVENESS

There are different tests in different countries pertaining to the inventiveness of an invention to be patented. In South Africa, an invention shall be deemed to involve an inventive step if such step (which forms the basis of the invention) is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art.

  • CAPABLE OF BEING USED IN INDUSTRY

This requirement entails that the invention must be able to be practically and physically applied in an industry. The invention must not merely be an idea.

WHICH PRODUCTS CAN BE PATENTED?

The South African Patents Act, stipulates which inventions are NOT patentable. Therefore, any invention that satisfies the requirements shall be patentable subject to the exclusions contained in the Patents Act.

The exclusions contained in Section 25 of the Patents Act, can be summarised as follows:

  • Discoveries;
  • Scientific theories;
  • Mathematical methods;
  • Literary, dramatic, musical or artistic works or any other aesthetic creations;
  • Schemes, rules or methods for performing mental acts, playing a game or doing business;
  • Computer programs; or
  • Presentation of information;
  • Plant or animal varieties;
  • Any essentially biological process for the production of animals or plants (not being a micro-biological process or the product of such a process;
  • Methods of treatment of the human or animal body;
  • Methods of diagnosis on the human or animal body;

This is not an exhaustive list but can be used as a guideline. Certain exceptions are applicable to some of the above items. One of which is that the new use of a known substance may be patentable in that the specific composition may not be new, but a new application thereof to deliver a new process or product may well be patentable.

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

HOW DO I REGISTER A PATENT?

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.
  • 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 filing 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.

  • Paris convention

The Paris Convention applies to industrial property and includes patents, trademarks, industrial designs, utility models etc. and the repression of unfair competition.

The substantive provisions of the Convention fall into three main categories: national treatment, right of priority and common rules.

In the case of patents, the right of priority is provided. This right of priority means that, on the basis of a regular first application filed in one of the Contracting States, the applicant may, within a certain period of time (12 months), apply for protection in any of the other Contracting States.

These subsequent applications will be regarded as if they had been filed on the same day as the first application. In other words, they will have a priority over applications filed by others during the said period of time for the same 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.

It is not necessary to file a provisional patent application before a complete application is filed. A complete patent application can be filed as the first and final application in the event that all the research and development pertaining to the invention is complete or the invention is in its final form.

A complete patent application can also be filed and claim priority from an earlier South African provisional application – provided the complete application is based on the provisional application – or a complete application can be filed and claim priority from an earlier complete application which does not contain a claim to priority.

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

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