Info for South African Patent Applications

South Africa is a member of the Paris (ie International) Convention, and has been a member of the PCT since 16 March 1999. The deadline for filing PCT national phase applications in this country, is 31 months from the earliest priority date. The Registrar has a discretion, on formal request made to him by the applicant, to extend the national phase deadline by three months.

PATENTABLE INVENTIONS

The South African Patents Act defines patentable inventions as those which are new, involve an inventive step, and are capable of being used or applied in trade, industry or agriculture. It specifically provides that the following are not patentable inventions:

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
the presentation of information.

In addition, a method of treatment of the human or animal body by surgery or therapy or of diagnosis, is not patentable.

PRIOR ART (ie “STATE of the ART”)

The “state of the art” comprises all matter which has been made available to the public, anywhere in the world, by written or oral description, by use, or in any other way.

NOVELTY

In order to satisfy the novelty requirements for patentability in South Africa, an invention must not have formed part of the state of the art immediately before the priority date of the invention. For the purpose of assessing novelty, the state of the art also includes matter contained in a South African application which has an earlier priority date, even if such application with the earlier priority date has not yet been made available to the public.

INVENTIVENESS/NON-OBVIOUSNESS

An invention is deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art immediately before the priority date of the invention.

UNITY of INVENTION

The Patents Act states that “A patent shall be granted for one invention only, but no person may in any proceedings object to a patent on the ground that it comprises more than one invention”. It is clear, therefore, that a granted patent cannot be invalidated or revoked on the ground of non-unity of invention. However, the question still arises of whether or not a court would enforce a patent which claims separate inventions, in respect of only one of them.

DIVISIONAL APPLICATIONS

One or more divisional applications can be filed at any time while a patent application is pending and before formal acceptance thereof, by the ZA Registrar of Patents. The divisional application option is available irrespective of whether or not the unity of invention provision is satisfied; and can be used, for example in those instances where a continuation or continuation-in-part application is filed by the applicant in respect of the corresponding US application. The divisional has to be “in respect of part of the matter disclosed” in the parent application.

AMENDMENT of SPECIFICATION

The description, claims and drawings can be amended/corrected at any time while the application is pending, provided that no new matter is thereby introduced. Any request for amendment, or for correction of a non-clerical error, has to include “full reasons”.

EXAMINATION

The South African patenting procedure does not include a search by the South African Patent Office authorities, nor substantive examination of the patent specification, nor opposition proceedings. Accordingly, if the formal (e.g. documentary) requirements are satisfied, a patent will be granted on the application. However, at any time during the life of a patent, a third party can apply to the Commissioner of Patents for revocation of the patent on a number of prescribed grounds which include lack of novelty and obviousness. Generally a South African application is formally accepted within about six to nine months of filing, provided the formal requirements have been satisfied. A patent issues within two or three months thereafter, and then the scope of allowable amendments is restricted.

LIFE OF A PATENT

The term of a patent for non-PCT applications is 20 years from the South African filing date, and for PCT national phase applications is 20 years from the filing date of the PCT International application.

MAINTENANCE/RENEWALS

No maintenance fees are payable on pending applications. Renewal fees become payable once the patent is granted. Nevertheless, the Registrar will accept renewal fees before the due date, and even while the application is pending. The general rule is that the first renewal fee falls due on the first anniversary of the filing date, and subsequent renewal fees are payable annually thereafter.

For patents granted on non-PCT applications, if the date of grant of the patent is after the third anniversary of the ZA filing date, then the first renewal fee falls due on the date of grant.

For patents granted on PCT national phase applications, the third anniversary is counted from the filing date of the PCT international application, and if the date of grant is less than three months before the third anniversary, then the first renewal fee falls due six months from the date of grant of the patent.

DOCUMENTARY REQUIREMENTS (Non-PCT National Applications)

The following have to be filed in support of a South African application:

Prescribed forms signed by the applicant or by his patent attorney representative in South Africa.
A prescribed declaration on Patents Form P.3, which has to be signed by the applicant or, if the applicant is a corporation, by an authorised official of the applicant. The full names and capacity of the signatory have to be furnished. Proof of authorisation of the signatory by the corporation, is not required.

The deadline for filing the Form P.3 is six months from the ZA application filing date. This is an extendible deadline.
A declaration on Patents Forms 26 (in respect of the use of indigenous material and traditional knowledge) executed by the applicant or, if the applicant is a corporation, by an authorised official of the corporation. Proof of authorisation of the signatory is not required. The deadline for filing the Form P26, is six months from the ZA filing date. This is an extendible deadline.
Documentary proof of the transfer of rights from the inventor to the applicant for those cases where the applicant is not the inventor. The documentary proof can be a copy of an existing deed of transfer of rights which at least implicitly includes South Africa, provided the copy is certified by a notary public or the like, to be a true copy of the original, or is a certified copy issued by the Patent Office of another country (e.g. the USPTO).

The proof of transfer of rights has to be filed within eighteen months from the ZA date of filing the application, or within three months of an Official Action calling for this document.
Patent specification and claims (two copies for filing and one copy for our file) for filing together with the application.

The South African “patenting language” is English. However, the patent specification accompanying a South African application can be in a language of any member country of the Paris Convention. If the specification is not in English, a verified English translation has to be filed within three months of the ZA filing date. This is a non-extendible deadline.
Drawings for filing together with the application. Formal drawings on A-4 size sheets have to be filed, in duplicate, within eighteen months of the ZA filing date, or within three months of an Official Action calling for the formal drawings.
An Abstract which should not exceed 150 words, has to be filed within eighteen months of the ZA filing date.
A certified copy of the priority application if the ZA application is claiming Convention priority and, if applicable, a verified English translation of the priority document. Priority documents issued by the USPTO on disk in electronic format are acceptable to the South African Registrar, provided they are accompanied by a hard copy print out of the contents of the disk, and provided the hard copy is certified as a true copy, by an attorney.

The deadline for filing the priority document is six months from the ZA filing date. This is an extendible deadline.
If the South African application is claiming priority under the benefits of the Paris Convention, and if the applicant in the Convention country is not the same as the applicant of the South African application, documentary proof has to be furnished, of the transfer of priority rights from the applicant of the priority application to the applicant of the ZA application.

Originals of signed documents have to be filed. The Registrar does not accept, for example, ordinary photocopies or faxed copies of signed documents Accordingly such documents have to be sent to us by mail or courier.

Neither legalisation nor notarisation of documents is required.

In Case of Urgency

A ZA filing date for an application which claims Convention priority can be secured by filing the following:

The prescribed application form and official fee;
The applicant's name and address;
The title of the invention of the priority application;
The country, number and date of filing of the application from which priority is to be claimed

provided that the patent specification, (including claims and drawings), is filed within 14 days of the ZA filing date. If the specification is not in the English language, a verified English translation has to be filed within three months of the ZA application filing date.

For non-Convention applications, a copy of the patent specification (including claims and drawing, if any) has to be filed to obtain a filing date.

DOCUMENTARY REQUIREMENTS (PCT National Phase)

A South African (ZA) PCT national phase application cannot be accompanied by a copy of the patent specification, unless the specification of the international application was not filed or published in English, in which case, the applicant is obliged to file an English translation of the specification within six months of national phase entry. Upon receipt of a PCT national phase entry, the ZA Patent Office asks WIPO to send to the ZA Patent Office, (a) a copy of the PCT pamphlet (ie WIPO publication sheet, published specification and search report) and (b) a copy of any amendments to the claims under article 19. Also, for Chapter II applications, WIPO furnishes the ZA Patent Office with a copy of the international preliminary report on patentability (IPRP) including any annexes and, if applicable, an English translation of the IPRP. In addition, an English translation of the annexes to the IPRP has to be filed by the applicant.

Any amendments which may have been made during the International application in terms of article 19 are deemed to have been made in terms of the ZA Patents Act. Any amendments which may have been made in terms of Article 34 of the PCT, and which are annexed to the IPRP, are also deemed to have been made in terms of the ZA Patents Act. An article 19 and/or an article 34 amendment can only be reversed by way of a formal request for amendment in terms of the ZA Patents Act relating to amendments.

If the PCT international application has not been filed or published in the English language, an English translation of the patent specification has to be filed within six months of the ZA filing date. This is a non-extendible deadline. Failure to meet the deadline will result in the national phase application being deemed to have been abandoned. The translation must also include any textual matter on the drawings. Furthermore, if the specification has been amended in terms of Article 19 or Article 34, an English translation of the amendments has to be filed.

Please send us the following to enable us to file the PCT national phase application on your behalf.

The WIPO publication sheet – or the WO number or PCT international application number which will permit us to obtain a copy of the WIPO publication sheet from the Internet.
A prescribed declaration on Patents Form P.3, which has to be signed by the applicant or, if the applicant is a corporation, by an authorised official of the applicant. The full names and capacity of the signatory have to be furnished. Proof of authorization of the signatory by the corporation, is not required.

The deadline for filing the Form P.3 is six months from the ZA application filing date. This is an extendible deadline.
A declaration on Patents Form P26 (in respect of the use of indigenous material and traditional knowledge) executed by the applicant or, if the applicant is a corporation, by an authorised official of the corporation. Proof of authorisation of the signatory is not required. The deadline for filing the Form P26, is six months from the date of ZA national phase entry. This is an extendible deadline.
Documentary proof of the transfer of rights from the inventor to the applicant for those cases where the applicant is not the inventor. The documentary proof can be a copy of an existing deed of assignment which at least implicitly includes South Africa, provided the copy is certified by a notary public or the like, to be a true copy of the original, or is a certified copy issued by the Patent Office of another country (eg the USPTO). Instead, the Registrar accepts proof that a PCT Regulation 4.17 declaration has been made.

The proof of transfer of rights has to be filed within twelve months from the ZA application filing date, or within three months of an Official Action calling for this document.
If the international application has not been filed or published in terms of the PCT in English, an English translation of the specification, claims and drawings lodged in support of the international application (and if amended under article 19, as so amended) has to be filed within six months of entering the national phase in South Africa. This is a non-extendible deadline. Failure to meet the deadline will result in the national phase application being deemed to have been abandoned.
A copy of the IPRP if it includes any article 34 amendments annexed thereto, and an English translation of the amended sheets if they are not in English – for filing within twelve months of national phase entry.
If the PCT international application claims Convention priority, and if Rule 17.1 of the PCT regulations has not been satisfied, a certified copy of the priority document for filing within six months of the ZA filing date if PCT Regulation 17.1 has not been satisfied. This is an extendible deadline. Priority documents issued by the USPTO on disk in electronic format are acceptable to the South African Patent Office provided they are accompanied by a hard copy print out of the contents of the disk, and the hard copy print out has to be certified by an attorney, as a true copy. A translation of a priority document is not required unless the validity of the priority claim is relevant to the determination of whether or not the invention concerned is patentable. In this regard we mention that a pending application is not subjected to substantive examination, nor is it open to opposition. Only after grant of the patent can the validity of the patent be questioned by a third party.
If the South African application is claiming priority under the benefits of the Paris Convention, and if the applicant of the priority application is not the same as the applicant of the South African application, documentary proof has to be furnished, of the transfer of priority rights from the applicant of the priority application to the applicant of the ZA application. The South African Registrar is accepting proof of PCT regulation 4.17 (iii) declarations instead of assignments of priority rights.

The South African Registrar will not accept ordinary photocopies or faxed copies of signed documents. The originals of such documents have to be sent to us by mail or courier.

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