NB: The answers set out here are simplifications which are supplied for guidance only. You should always consult a patent attorney before making any decisions relating to inventions and patents.
Patents, trade marks and copyright are all forms of “intellectual property”, also sometimes known as immaterial property or intangible property.
A patent gives you an exclusive right to stop others from exploiting your invention. A patent can be obtained for a product or a process that provides a new and non-obvious technical solution to a problem in trade, industry or agriculture.
A trade mark, on the other hand, is a brand name, slogan or logo which identifies your goods or services and distinguishes them from the goods and services of others.
Copyright relates mainly to the protection of artistic and aesthetic works such as novels, films, music, photographs and architecture. More generally it relates to any literary, dramatic, musical and artistic works, computer programs, databases and other aesthetic creations.
Normally an invention relates to an improved product or a process in a field of technology. Many products in fact contain a number of inventions e.g. a mobile phone can involve a number of inventions, working together.
In South Africa, absolute novelty is required for an invention to be patentable. This novelty requirement means that the invention must not have been known anywhere in the world before your earliest date of application at the Patent Office. This does not only refer to disclosures which you yourself have made. If anyone anywhere in the world – not just in South Africa - has ever previously written about the invention, used it or sold it, you cannot get a valid patent. Thus, novelty is destroyed if the invention was made available to the public anywhere in the world, by written or oral description, by use or in any other way before the priority date. Novelty is also destroyed by matter contained in an earlier patent application in South Africa; or by prior use of the invention on a commercial scale in South Africa, even if that use was kept secret. For example, if a soft-drink product has already been on the market then it can’t be patented even if the manufacturer has managed to keep a special ingredient or its recipe secret from its consumers.
To be patentable, your invention must also have an inventive step, meaning that it must not be obvious to an expert who deals with technology in that field.
In South Africa there are certain types of subject matter which are not allowed to be patented. For example, it is not possible to patent a discovery; a scientific theory; a mathematical method; a literary, dramatic, musical or artistic work or any other aesthetic creation; a scheme, rule or method for performing a mental act, playing a game or doing business; a program for a computer; or something which constitutes the presentation of information. Please note, however, that these exclusions are interpreted very narrowly and you should consult with a patent attorney before deciding that the subject matter of your invention is not patentable. For example, a computer program may be patentable if it is claimed in combination with computer hardware, and it may be patentable in other countries even if the South African law excludes it. For example, mobile “apps” have been patented despite this exclusion.
A South African patent will also not be granted for a plant, an animal or an essentially biological process for the production of an animal or a plant, unless it is a microbiological process or the product of such a process. Protection for plant varieties is obtained by the grant of plant breeders’ rights.
Methods of treatment of the human or animal body by surgery or therapy or diagnosis are not patentable in South Africa. It is important to note that a substance or composition for use in such a method may be patentable even if the substance or composition itself is known. A medical apparatus may also be patented.
In South Africa (but not the rest of the world) you can get an extra three months over and above the 12-month Convention period. Therefore you can file your complete patent application up to 15 months after your provisional filing date.
There are some other solutions. For example, a patent attorney could post-date your provisional patent application for up to 6 months beyond the date on which you actually filed it, thereby giving you an extra 6 months in which to file your complete patent application while still claiming priority from your provisional patent application.
You could also re-file your provisional patent application but only if you have not already disclosed your invention to the public or sold examples of it in the interim.
You must consult a patent attorney before attempting any of these solutions because they all involve complexities and cannot be used in certain circumstances.
Patents are territorial rights and therefore it is not possible to obtain an “international patent” or a “world patent”. You need to obtain a separate patent in each separate country or region of interest.
The duration of a South African patent is 20 years from the date of filing, subject to the payment of annual renewal fees from the third year following filing. However, a total of 21 years of protection may be obtained if one starts with a provisional patent application and follows that up with a complete patent application. The provisional patent application provides a 12-month period of protection and the complete patent application must be filed before those 12 months end.
Under South African law, applicants can prepare and file provisional patent applications without the assistance of a patent attorney. However, when the complete patent application is being submitted, the assistance of a patent attorney is compulsory.
Note: We strongly recommend getting a patent attorney to draft your provisional patent application even though this is not strictly necessary in terms of the law. Patent drafting is a highly specialised field. Many self-drafted patent applications do not meet legal requirements and an inventor’s rights can be lost as a result.
It is not possible to keep an invention secret and obtain a patent at the same time. Patents are granted in exchange for a full disclosure of the invention. The details of the invention are published as part of the patent process and the invention is made available to the public at large. In South Africa, patents are only published after the acceptance of the patent but they usually become open to public inspection before that. Anyone can apply to the Patent Office to inspect a patent once 18 months have elapsed from the earliest patent application date.
Registration of a design can be used to protect the appearance of an article of manufacture, for example if it has a new shape, configuration or ornamentation. This relates to the way that the product looks rather than the way that it works. Registered designs are thus fundamentally different from patents in the sense that patents relate instead to technical features and principles of operation irrespective of appearance.
In cases where an improvement of an existing product is not sufficiently inventive to be patentable, an application to register a design may represent a good alternative.
A well-kept trade secret could theoretically last forever and in certain circumstances it may be advisable for a company to keep its inventions as trade secrets instead of patenting them. However, this is only feasible if the invention is something which it is possible to keep secret. It is very important to manage the risk of disclosure by taking every measure to ensure that the information remains confidential. Unlike with patents, it is perfectly legal for competitors to reverse engineer and copy a product protected by a trade secret.
There is no legal requirement that you have to “register” or patent a product before you can sell it. However, there are many advantages to obtaining a patent if your invention qualifies for one. For example, if you do not patent your invention you will lose your rights to stop others from exploiting it. If you do not obtain a patent then you are effectively gifting it to the public; the invention becomes part of the “public domain” and anyone can exploit it for their own benefit (e.g. make, use or sell it), without having to seek your permission or give you any remuneration or recognition in return.
The following are some possible consequences of not patenting your invention:
Somebody else might patent your invention
The first applicant to apply for a patent for an invention will have exclusive rights should the patent be granted. If you do not patent your invention and somebody else who may have developed the same or an equivalent invention patent the invention, you may be legitimately excluded from the market or be required to pay a licensing fee for using the invention.
Competitors may take advantage of your invention
It is not necessary for others to ask your permission to use an invention, or to pay you for using it, if the invention is not patented. Big business enterprises may take advantage of economies of scale, produce your invention more cheaply and compete at a more favourable market price than you are able to. Smaller businesses in turn may produce the same product and thereby reduce your market share for your innovation. The smaller businesses do not have to recover research and development costs and may therefore also be able to sell your invention at a cheaper price.
The possibilities to license, sell or transfer technology will be limited
Ownership of exclusive rights under-pins intellectual property transactions. It will be very difficult if not impossible to sell, transfer or licence an invention without intellectual property protection.
In summary, if you do not patent your invention, competitors may take advantage of it to your detriment. Unfortunately this normally only occurs when a product becomes highly commercially successful. One can think of patent protection as a type of “insurance against success”; if your product becomes successful then the money you spent on patents was extremely well spent. However, you should not embark upon a patent programme if the financial return which you expect from the product or process does not at least exceed the likely cost of the patent programme.
The initial costs to file a provisional patent in South Africa are relatively insignificant compared to the international patenting costs. The filing of a provisional patent application secures a priority date for the invention. A complete patent application as well as foreign applications must be filed within 12 months from the priority date.
The estimated patent filing costs set out below are provided only as a rough guideline to give an idea of what may be expected. The figures are provided for guidance only and we regret that we cannot be held to them.
Please also note that the figures relate only to costs for filing; subsequent costs will arise for prosecuting your patent applications through to registration and for paying annual renewal fees. THESE ADDITIONAL COSTS ARE SIGNIFICANT FOR FOREIGN PATENT APPLICTIONS AND TYPICALLY EXCEED THE FILING COSTS, although the costs are spread out over several years.
The cost of policing a patent through the courts is also the responsibility of the patentee; the government and police will not assist you to take action against anyone who infringes your patent.
You should not embark upon a patent programme if the financial return which you expect from the product or process does not at least exceed the likely cost of the patent programme.
Estimated Filing Cost
|SA Provisional||R10,000 – R20,000|
|SA Complete||R15,000 – R25,000|
|PCT||R45,000 – R100,000|
|National USA||R60,000 – R80,000|
|Regional Europe||R130,000 – R170,000|