PCT National Phase Patents in South Africa
Enter the PCT national phase in South Africa for USD 950 | EUR 850 | GBP 750 including one priority claim.
This price is valid for 2017.
Note: The above price does not include late lodging of documents, if required. Late lodging can be avoided by providing us with scans of the necessary documentation before the filing date. The above price also does not include any of the optional services listed below (review, amendment, renewal, etc.).
Our charges are fixed and do not depend on the length of the specification, number of claims, etc.
The deadline for entry into the national phase is 31 months from the earliest priority date, irrespective of whether a Chapter II demand was filed or not. This deadline may be extended by 3 months, to 34 months from the earliest priority date.
For urgent cases we can file with the following minimum requirements:
- Name and physical address of applicant.
- Title of the invention.
- PCT international application number and filing date.
- Number, date and country of the basic application if Paris Convention priority is claimed.
FILING IN THE NORMAL COURSE
The following are the full filing requirements for PCT national phase applications in South Africa. A summary of the requirements is given first, followed by detailed information about each requirement:
Summary of Filing Requirements:
Documents that we complete in our office:
- Form P25 (Application Form)
- Form P2 (Register Page)
- Form P8 (Publication Particulars and Abstract)
Documents required from the Applicant:
- Verified English translation of specification and amendments (if original not in English) – 3 months* from national phase filing date.
- Specification (file copy) – This is for our file only; the Patent Office will download the official copy – no deadline.
- Form P3 (Power of Attorney) – 6 months from national phase filing date.
- Form P26 (Statement on Use of Indigenous Resource, etc.) – 6 months from national phase filing date.
- Chain of Title (e.g. Confirmatory Deed of Assignment) – 6 months from national phase filing date.
- Priority Document & Translation (not required if PCT Rule 17.1 fulfilled) – 6 months from national phase filing date.
Blank copies of the Forms P3 & P26 as well as any applicable Deeds of Assignment will be sent to you if you decide to proceed.
Detailed Filing Requirements:
1. Translation (within 3 months*, not extensible):
If the international application was not lodged or published in English a verified English translation of the international application must be lodged with prescribed contents (set out below). *There are differing interpretations of the provisions of the Patents Act & Regulations regarding the applicable time limit for lodging of the translation, so for the sake of caution we work to the shortest interpretation. This is 3 months from the date of paying the official fees, i.e. 3 months from the date of entry into the national phase in South Africa.
Note: *According to this cautious interpretation of the Act, failure to lodge the translation within the 3-month time limit will result in the national phase concerned being deemed to have been abandoned.
The following are the prescribed contents of the translation which must be submitted.
- the description;
- the claims; and
- any textual matter on the drawings.
Note: The translation must include any amendments made to the above items during the international phase. Where either or both Article 19 and Article 34 amendments have been made during the international phase, then such amendments will automatically form part of the South African application. If said amendments were not made in English then a verified translation thereof into English must be provided within three months from the date of entry into the national phase.
We can arrange translation of the specification on your instructions, if required.
The South African Patent Office will obtain a copy of the International Application, together with any Article 19 and Article 34 amendments, directly from WIPO. Copies of the specification, claims, drawings, and abstract are not required from the applicant for official purposes.
However, we ask you to send us copies for our file of the following: the published specification, International Search Report, International Preliminary Reports on Patentabilty I & II, and any amendments made during the international phase. This facilitates review and amendment of the specification, should you instruct these additional services.
3. Form P3 – Power of Attorney (within 6 months, extensible):
A Declaration & Power of Attorney, on South African Patents Form P3, must be lodged within 6 months of the national phase filing date. Extensions of this period are available.
4. Form P26 – Statement on Use of Indigenous Resource, etc. (within 6 months, extensible):
Note: Form P26 must be filed irrespective of the field of technology to which the invention relates. The Form P26 is a statement on the Use of Indigenous Biological Resource, Genetic Resource, Traditional Knowledge or Use. It must be lodged within 6 months of the filing date (extensible). It is our view that the subject matter referenced by the Form P26 is limited to South African resources, knowledge or use.
Where the Form P26 contains a statement that the invention for which protection is claimed is based on or derived from an indigenous biological resource, a genetic resource, or traditional knowledge or use, the applicant shall, before acceptance of the application furnish the Registrar with proof of his or her title or authority to make use of the indigenous biological resource, the genetic resource, or the traditional knowledge or use, by lodging with the registrar one or more of the following:
(a) a copy of the permit issued in terms of Chapter 7 of the National Environmental Management: Biodiversity Act, 2004;
(b) if applicable, proof that prior consent had been obtained as contemplated in section 82(2)(a) or 82(3)(a) of the National Environmental Management: Biodiversity Act, 2004;
(c) if applicable, proof of a material transfer agreement as contemplated in Section 82(2)(b)(i) of the National Environmental Management: Biodiversity Act, 2004;
(d) if applicable, proof of a benefit-sharing agreement as contemplated in Section 82(2)(b) of the National Environmental Management: Biodiversity Act, 2004;
(e) if applicable, proof of co-ownership of the invention for which protection is claimed;
(f) any other proof to the satisfaction of the Registrar.
5. Chain of Title, e.g. Assignment (within 6 months):
The Registrar requires satisfactory evidence that the Applicant is entitled to apply for the South African patent. This is required only if the Applicant is not the inventor. The following would, for example, suffice: an assignment agreement, an Affidavit by an employer, a certified copy of an excerpt from an employment contract. We can send you a standard Assignment agreement. No legalisation is required.
An Assignment of Priority Rights is required where the South African applicant is different from the priority applicant. Again, no legalisation is required.
The evidence of chain of title must be filed within 6 months of the national phase filing date.
6. Priority Document & Translation (within 6 months):
If the applicant has complied with Rule 17.1 of the PCT (re. forwarding of priority document to the International Bureau) then neither the priority document nor a translation of the priority document need be lodged in South Africa.
If the applicant has not complied with Rule 17.1 then a priority document, together with a verified translation thereof, must be lodged with the Patent Office within 6 months of entering the South African national phase. This time limit may be extended at the discretion of the Registrar.
We can review, amend and renew PCT national phase applications in South Africa.
Failure to carry out pre-grant review & amendment of a national phase patent application is not necessarily fatal to validity but it can be severely disadvantageous given the significant impact that the grant of a South African patent has on the scope of allowable amendments after grant (see below, in relation to “Amendment”).
We therefore highly recommend pre-grant review and amendment.
- Review of Patent Specifications:
Our fixed charge for reviewing a PCT national phase patent application is US$ 400-00 (EUR 365-00). Should you wish to make any amendments suggested by us after the review, our fixed charge for lodging an application for amendment before grant is US$ 400-00 (EUR 365-00).
Voluntary amendments may be made at any time after application, including after grant. However, amendments made after grant have to fall within the scope of the pre-existing claims. This feature of the South African Patent System makes it highly desirable to introduce an amendment before grant of the patent. This amendment can be used to add omnibus claims, which are allowable in South Africa and which can serve to broaden the scope of possible claims that can be introduced after grant.A voluntary amendment before grant can also be used to delete claims not allowable in South Africa, such as method of treatment claims, or to add new claims according to standard South African practice.
Grant of a South African patent can be expected as early as 8 months after filing, so voluntary amendment should be applied for earlier than that.
We recommend applying for a voluntary amendment within 3 months from the date of entry into the national phase in South Africa. On your instructions we shall formally apply for amendment of the application to bring it into conformity with South African patent practice and legal requirements, as set out above. At the same time we can also attend to any other amendments and corrections instructed by you, for example, amendments made in the light of prior art that has become known to the Applicant. The Applicant can also use this opportunity to reverse any overly-limiting amendments that may have been made during the international phase, for example, amendments made in response to obviousness criteria which are stricter than those applying in South Africa.
South Africa has a non-examining Patent Office, meaning that patent applications are examined only for compliance with formal requirements; they are not examined as to substance. It is the duty of the applicant to ensure that the application is valid as to novelty and inventive step. Accordingly, we recommend amending the claims of a South African national phase application after it has proceeded to grant, to bring the claims into line with corresponding foreign claims that have been allowed elsewhere by examining Patent Offices. We would suggest waiting at least three years from the national phase filing date before making such an amendment
Costs for Amendment
Our fixed charges for preparing, filing and advertising amendments (including payment of official fees) are as follows:
Amendment before grant: US$ 400-00 (EUR 365-00)
Amendment after grant: US$ 600-00 (EUR 550-00) after grant.
- Renewal (Annuity Payments)
The term of a South African patent is 20 years from filing (i.e. 20 years from the international filing date in the case of PCT national phase applications).
Annual renewal fees are payable in advance, commencing 36 months after the international filing date but this deadline is extended where a patent is granted more than 33 months after the international filing date, in which case the accumulated first fees can be paid within 6 months of the date of grant of the patent in question. Subsequent renewal fees fall due annually on each anniversary of the international filing date.
A six-month period of grace is available on payment of a fee.
We can record your patent on our renewal database and send you annual reminders. Another option is to pay all the renewal fees for the entire 20 year patent term immediately after grant, which leads to substantial savings (50% or more) over payment of individual annual fees.
PATENT PROSECUTION TIMELINE
- Application documents are lodged with the Patent Office.
- Approximately 3 weeks after lodging the applicant receives an official application filing receipt. This sets out an official filing number and the date of lodging.
- Six to nine months after filing the application is examined by the Patent Office to determine whether all formal requirements have been met. There is no substantive examination to test whether an invention is new and non-obvious. No official actions will issue other than those necessary to ensure compliance with formalities.
- Patent applications that have been properly lodged and which comply with formal requirements will be accepted. A Notice of Acceptance is issued by the Patent Office for onward submission to the Government Printer.
- The Notice of Acceptance is published in the Patent Journal. It takes 2 to 3 months for the publication to be arranged. The patent is deemed to have been registered (i.e. granted) as of the date of publication in the Patent Journal. There is no provision for opposition. From the date of publication, i.e. grant, the official file becomes open to public inspection.
- A registration certificate is issued approximately 6 months after publication of the Notice of Acceptance.
We ask first-time clients to supply us with proof of advance payment before instructing us to perform any services. Please send your proof of payment by e-mail to email@example.com
Details of our bank account will be supplied to you on request. Please contact Mr Rory Moore in this regard (contact details given below).
HOW TO INSTRUCT US TO FILE
To instruct us to file a PCT national phase patent application, please contact Mr Rory Moore:
E-Mail 1: firstname.lastname@example.org
E-Mail 2: email@example.com
Telephone: +27 31 785 1190
Note: Mr Rory Moore is a Registered South African Patent Attorney and an associate at Moore Attorneys of 30 Bishop Street, Camperdown, 3720, South Africa.