South African Inventions

The proprietor of a South African patent has the right to stop other persons, for the duration of the registration (up to twenty years), from making, using, exercising, importing, disposing of (e.g. selling), or offering to dispose of, the invention.

The South African Patents Act does not define what is patentable other than in broad terms, i.e. a patentable invention is one which is new, involves an inventive step, and is capable of being used or applied in trade, industry or agriculture. In principle, a patent is obtainable for a device, article or product, or for a method or process of doing something. A patent protects the functional features of an article; a design registration protects the features of appearance of the article. Examples of inventions which are, in principle, patentable are a bottle opener, a musical instrument, a mine prop, apparatus for playing a game, a medicament, a pesticide, a method of construction, a chemical process, etc. The ZA Patents Act is more specific in its definition of what is not patentable in that it specifically provides that the following are not patentable inventions:

Secrecy is of paramount importance if you are considering obtaining patent protection for your invention. South Africa, and indeed all of the important countries in the world, require that an invention must be “new” or “novel” in order to qualify for patentability. The various countries have different novelty requirements for patentability. In South Africa, if you make your invention “available to the public” anywhere in the world, before you file a patent application for the invention, you destroy patentability of the invention, i.e. you will no longer be able to obtain valid patent protection for your invention in South Africa and many other important countries. In this regard you should bear in mind that telling a single person about your invention could be a novelty-destroying event. If you cannot avoid disclosing your invention to a third party, then you must ensure that the third party understands that you are making the disclosure to him in the utmost confidence.

If you make an invention, and the design is disclosed, used or made known by a third party, you are not barred from obtaining ZA design protection on the ground of lack of novelty, provided you provide proof (i) that the third party’s knowledge, and the matter disclosed or used by him, were obtained from you without your knowledge or consent; and (ii) that you applied for and obtained protection for your design as quickly as possible after learning of the disclosure, use or knowledge by the third party.

A further valid excuse for making the invention “available to the public” before filing a patent application for the invention, is the following: the invention was worked in South Africa by way of reasonable technical trial and experiment by the person who owned the invention at that time.

However, it is always the better option to observe strict secrecy about your invention until a patent application accompanied by a provisional specification describing your invention, is actually filed at the South African Patent office.

There is no such thing as a “worldwide patent”. In other words, it is not possible, by way of a single patent, to achieve worldwide protection. Separate patent protection (with few exceptions) has to be obtained in each country of the world in which patent protection is required. This can be problematic because the other countries in the world also have novelty requirements which have to be satisfied in order for an invention to be patentable there. However, most of the countries in which you are likely to require patent protection, are members of the so-called “Paris Convention” which is also known as the “International Convention”. The member countries recognise, for the purpose of establishing a priority date, a patent application filed in another country that is also a member of this Convention. Thus, a single patent application filed at the South African Patent Office, can secure for you, for a period of twelve months, an option also to file patent applications in other countries such as the United States, the United Kingdom, Japan, Australia, Germany and other European countries, etc.

Therefore, usually the best course of action is to keep your invention a secret, and as soon as possible to file a patent application accompanied by a provisional specification describing your invention, at the South African Patent Office. This will have the effect (1) of giving you a twelve month “option” to apply for patent protection for that invention in all of the other countries in which you might be interested (and which countries will recognise your filing date in South Africa), and (2) of permitting you immediately to try and exploit your invention without fear that the accompanying publicity will destroy patentability.

You can secure a twelve-month “option” to file patent applications in respect of all the important countries in the world, by filing a single patent application at the South African (ZA) Patent Office. This single ZA application must be accompanied either by a provisional patent specification or by a complete patent specification. There is a single Patent office in South Africa, and it is situated in Pretoria. You and other members of the public are permitted to visit the ZA Patents Office, to pay the prescribed fees, and to file your own patent applications.

If the application is accompanied by a provisional specification, you do not need a patent attorney or, indeed, any attorney, to assist you. However, for the reasons given below, it is strongly advisable that you obtain assistance in the drafting of the provisional specification. If the application is accompanied by a complete specification, then you have no choice, i.e. the complete specification has to be signed by an attorney who must be registered as a patent attorney at the ZA Patents Office.

If the application is accompanied by a provisional specification, it will not mature into a patent. In order to obtain patent protection, a complete specification has to be drafted, and within twelve months of the provisional filing date, (1) an application accompanied by the complete specification has to be filed at the ZA Patents Office in respect of South Africa, and (2) steps have to be taken to protect the invention in such other countries in which you might be considering exploiting the invention.

It is not necessary to file a provisional specification first, and a complete specification later; it is possible to file an application accompanied by a complete specification in the first instance. The advantage of filing a provisional specification is the relatively low cost. Once you have filed a ZA application accompanied by a provisional specification describing your invention, you no longer need to keep the invention a secret. You can disclose the invention to prospective manufacturers and customers, you can advertise the invention, make a prototype or samples thereof, and market and, indeed, sell embodiments of the invention or the invention itself, provided you ensure that within twelve months of the provisional specification filing date, you file a complete specification in respect of South Africa and the other countries in the world in which you are interested. In short, for a relatively low cost, you obtain the freedom openly to investigate the feasibility and economic viability of your invention before you have to outlay substantial patenting costs. Any novelty searches can also be conducted after the provisional specification is filed.

A provisional patent specification should “fairly describe” the invention. If it does not do so, then it will not support a claim to a priority date from any patent application you might want to file in respect of another country during the next twelve months i.e. a deficient provisional specification will not provide you with the abovementioned twelve-month “option” in respect of other countries. We always recommend that you include in the provisional specification, a very comprehensive description of your invention, how it is made, how it works, and that you give sufficient illustrated examples and alternatives to the preferred embodiment(s). You should bear in mind that if the provisional specification is deficient so that it cannot support a valid claim to priority, and if you disclose the invention during the twelve month “option” period, you will irrevocably have destroyed the patentability of the invention. It is for this reason that we always recommend that you obtain assistance in drafting a provisional specification even if you choose to file the patent application accompanied thereby, yourself.

A complete specification has to “sufficiently describe, ascertain and … illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such invention” and “end with a claim or claims defining the invention for which protection is claimed”. A complete specification has to be signed by a registered patent attorney.

The inventor(s) (i.e. the person(s) who made the invention) and/or another person who has acquired rights from the inventors, can apply for a South African patent. Such other persons have to provide documentary proof (e.g. an assignment of invention), to the satisfaction of the ZA Registrar of Patents, that they have acquired such rights.

If you require assistance in drafting a specification for your invention, a meeting for discussing the invention would be preferable but, in any case, you should furnish the following

PCT is an abbreviation for the Patent Cooperation Treaty. More than 100 countries are members of the PCT. As mentioned above, a single application in South Africa gives you a twelve-month option to file a complete specification in respect of those countries in which you might want to exploit your invention. In terms of the PCT, a single so-called “international” patent application can be filed in one of the member countries, designating those countries in which patent protection is required, and then (with few exceptions) you have an additional eighteen months to “nationalise” the PCT application in some or all of the countries you have designated. In other words, filing a PCT International application extends your abovementioned twelve-month option for filing in all of the important countries in the world, to thirty months (ie twelve plus eighteen). A PCT International application can also be filed at the South African Patent Office.

After your patent has been granted by the ZA Registrar, it is necessary to pay annual “renewal fees” to the ZA Patent Office, starting on the third anniversary of the patent application filing date. An extension (up to six months) is obtainable, subject to payment of an extension fine. If the patent is not renewed as prescribed, it will lapse. However, if the omission to pay the renewal fee was unintentional, it might be possible to have the patent restored provided that you apply for restoration as soon as possible after you realise that the patent has lapsed.

Corrections of clerical errors in any documents which are on file at the ZA Patent Office, can be corrected at any time in terms of the Patent Act and Regulations. Furthermore, other corrections and/or amendments are allowable before and after grant of the patent, in certain circumstances.