Patents in South Africa: General Information
Patent Filing Procedure in South Africa
In South Africa an application for a patent can be supported either by a provisional or by a complete patent specification. A patent specification is a document describing the invention in detail, often accompanied by drawings which help to explain it.
If your invention is still in its early stages and further developments and improvements are likely to be needed we recommend instructing a provisional patent application initially. The provisional specification is an important document as it will later form the basis for the complete specification. It should be drawn up professionally and with great care and should contain as much detail as possible. A poorly drawn provisional specification may be completely worthless from the legal point of view.
A provisional patent specification must be followed by a fresh patent application that is supported by a complete specification. This must be filed within 12 months of the filing date of the provisional specification, and must “claim the priority” of the provisional filing date. A 3 month extension of the 12 month period can be obtained on payment of a fee but this is only available for South African patent applications (international patent applications must be filed inside the 12 month period and this cannot be extended).
If the full details of your invention have already been worked out then a complete specification can be lodged “in the first instance”, meaning that a provisional patent application does not have to be filed first. Costs are therefore lower than for the provisional / complete route.
If you only require temporary protection for the purpose of testing the commercial possibilities of an invention then you may prefer to file a provisional specification initially even though you may be in a position to file a complete application in the first instance. In this way you prolong the duration of possible patent protection available to you. Instead of the 20 years which you get for a complete patent only, you can now get a total of 21 years (plus a further 3 months in South Africa). The initial cost of filing is also lower.
(Please be aware that the 20 year term of a South African patent is subject to annual payment of renewal fees, commencing at the end of the third year.)
If you file a provisional patent application and then make further important developments or improvements before the 12 month completion deadline is reached then you are advised to file one or more additional provisional application(s) covering those improvements. When you then eventually file your complete patent application you can “cognate” (combine) the different provisional specifications into the single complete patent application.
Registration and grant of a patent in South Africa usually takes place in under 2 years calculated from the filing date of the complete application. After grant the owner of the patent can protect subsequent improvements or modifications by applying for a “patent of addition.” Thought must be applied as to whether a patent of addition is preferred over an independent patent.
N.B. Before grant you only have a right of priority (over other patent applicants who file for the same subject matter). You do not have any enforceable patent rights until a patent has been granted by the Patent Office. In the years running up to grant it is important not to create any impression that you have patent rights. Even oral warnings or letters that simply notify competitors of the existence of your patent application(s) are not advisable. There are severe penalties for “unjustified threats of infringement.”
Patent Validity Requirements in South Africa
The South African Patent Office does not investigate the subject matter of patent applications when it examines them, and will grant a patent for any subject matter even well-known technology. However, you must not file an application for technology which you know has already been released to the public or sold, whether by a previous inventor or yourself and irrespective of whether the disclosure or sale took place in South Africa or anywhere else in the world. This is because technology that is already known to the public anywhere in the world cannot be patented. When filing a patent application you are required to sign a Declaration as to the lawfulness of the application. A misrepresentation in that Declaration will constitute fraud. Secondly, the validity of a patent can be attacked at any time by members of the public. The following are some of the most common grounds of attack:
- that the invention was not new in that, immediately prior to the priority date of the invention:
- it formed part of the “state of the art” 1; or
- the invention was described in an application for a patent having an earlier priority date, which subsequently became open to public inspection; or
- the invention was used secretly and on a commercial scale in the Republic of South Africa (i.e. if you have already been selling your invention to the public then you cannot get a patent for it, even if you have been keeping the actual invention itself secret).
- that the invention was obvious to a person skilled in the art, taking into account the “state of the art.” 1
For the above we have to rely on your information. However, searches can be carried out and we refer you to the section on searches at the foot of this pamphlet.
1The “state of the art” comprises all matter, whether a product, a process, information about either, or anything else, which has been made available to the public in South Africa or elsewhere by written or oral description, by use or in any other way, immediately prior to the priority date of the invention.
Infringement of Patents
The grant of a South African patent gives a patentee the right to prevent (only in South Africa) other persons from doing the following in relation to the Patentee’s invention:
- making it (e.g. manufacturing it)
- using it
- exercising it
- disposing of it (e.g. by selling)
- offering to dispose of it (e.g. by offering it for sale)
- importing it.
Infringement includes all forms of using the patented invention, even private use.
The grant of a patent (even if it is valid) does not authorise the patentee to commercialise his or her invention if some of its aspects are covered by the patents of others. A patentee who wishes to commercialise an invention should make sure that he or she is not infringing somebody else’s patent. For this purpose we strongly recommend that you instruct us to carry out an “infringement search” at the Patent Office.
Patent Protection outside South Africa
There is a common misconception that one can get a “world patent.” These do not exist. Separate protection must be applied for in each country or region individually.
South Africa is a member of the International Patent Convention (also referred to as the Paris Convention). In terms of this convention, you are entitled to claim the priority of the filing date of your South African patent or patent application, should you wish to obtain patent protection for your invention in other countries, on condition that these foreign patent applications are lodged within one year from said filing date in South Africa (or another member country of the Convention).
Most countries are members of the Convention. For the purpose of obtaining priority rights in foreign countries, a professionally prepared provisional specification will be sufficient basis.
An international search is recommended prior to filing applications in foreign countries under the Paris Convention.
Please keep in mind the countries which are not members of the Paris Convention, because if you need protection in these countries you may need to file a patent application there at the same time as you file your provisional application (i.e. before you have disclosed your invention to the public). Some notable examples of such countries are the Gulf states and certain South American countries. Please contact Mr Rory Moore at Moore Intellectual Property (details below) if you need further information in this regard, for example if you anticipate that the Gulf will be an important economic area for your invention.
The following are the important regional blocs for patents:
a) The European patent
This patent covers up to 40 European countries designated by the patentee. Details of the countries covered can be found here.
b) The OAPI Patent (single deposit patent for French-speaking Africa)
This patent covers the following 17 countries:
Benin; Burkina Faso; Cameroon; Central African Republic; Chad; Republic of Congo; Cote d’Ivoire; Comoros; Equatorial Guinea; Gabon; Guinea; Guinea Bissau; Mali; Mauritania; Niger; Senegal; and Togo
c) The ARIPO Patent (single deposit patent for English-speaking Africa)
This patent can cover up to 18 countries designated by the patentee:
Botswana, The Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, São Tomé & Príncipe, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia & Zimbabwe.
- Somalia is also a member of ARIPO but cannot be designated at this time.
- South Africa is NOT a member of ARIPO. If you require patent protection in South Africa you will need to file a separate patent application.
The PCT (i.e. Patent Co-operation Treaty) is an interim route towards obtaining separate (national) patents in over 140 countries, including South Africa. A single PCT international application is filed designating the countries expected to be important for patent protection. Normally this PCT application is lodged at the end of the 12-month provisional patent period. The PCT application provides you with a further 18 months (giving a total of 30 months from your provisional priority date). After that period, additional individual patent applications still need to be filed into the various countries or regions of interest. The initial phase is referred to as the “international phase” whilst the subsequent filings into the separate countries or regions are referred to as the “national phase”. Each national Patent Office has its own separate requirements regarding application formalities and language to be used when applying for protection under the PCT national phase.
As indicated, PCT international applications must be filed within the 12 months following the filing date of your priority patent application (e.g. within 12 months of the filing of your provisional patent application in South Africa).
During the international phase, applicants have an opportunity to amend their PCT application in response to an International Search Report and International Preliminary Report on Patentability, both of which are issued for all PCT applications at no extra charge. The 30-month international phase also offers applicants an opportunity to develop their IP strategy and to decide on the PCT countries and regions of interest to them for long-term patent protection.
As indicated, when the deadline for entering the PCT national phase is reached at 30 months, applicants must then file their national applications into each country and/or region of interest to them (assuming they still wish to carry on seeking protection for their invention).
A key advantage of the PCT route is that costs are contained during the international phase (i.e. for the 30-month or two-and-a-half-year period). A discount on official fees is available to Applicants who are natural persons and who are resident in, and citizens of, South Africa.
The PCT International Search Report and Preliminary Report on Patentability together give a good indication of the viability of the invention before greater expenses are incurred for entering the national phase in the various individual PCT contracting countries.
If your intention is to patent in foreign countries we recommend that you instruct us to conduct an international patent novelty search prior to carrying out a programme of patent applications involving large expenses.
This precaution is also recommended before investing heavily in somebody else’s patent or before embarking upon expensive litigation against an alleged infringer.
We can carry out international searches covering multiple patent issuing authorities. Although a good search may sometimes be expensive, it may prevent you from wasting money eventually.