Patents of Invention
– Patents Act No. 57 of 1978 and Patent Regulations 1978, effective from January 1, 1979.
– The Patents Amendment Acts of 1979, 1983, 1986, 1988, 1996, 1997, 2001, 2002 and 2005.
– Companies Act of 2008.
Membership in International Conventions
– Paris Convention for the Protection of Industrial Property, Stockholm Act.
– Convention Establishing the World Intellectual Property Organization (WIPO), effective March 23, 1975.
– WTO’s TRIPS Agreement, since January 1, 1995.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since April 30, 1995.
– Budapest Treaty on the International Recognition of the Deposit of Microorganisms, effective July 14, 1997.
– Patent Cooperation Treaty (PCT), effective March 16, 1999.
Applicant: the inventor, or his assignee, alone or jointly with others.
Master and servant: inventions made within the course and scope of one’s employment belong to the employer.
Types of patents: invention and addition.
Titles of inventions: must be descriptive and words such as “improved”, “relating to” and the like must be avoided.
Units of measure: must be shown in terms of the metric system.
Invention: any new invention which involves an inventive step and which is capable of being used or applied in trade or industry or agriculture.
Unpatentable: (a) a discovery; (b) a scientific theory; (c) a mathematical method; (d) a literary, dramatic, musical or artistic work or any other aesthetic creation; (e) a scheme, rule or method for performing a mental act, playing a game or doing business; (f) a program for a computer (Although the Patents Act excludes computer software from patentability, the exclusion only relates to that subject matter as such. At this time there is no case law on this topic in South Africa, but it is believed that the courts may follow a European type approach requiring a “technical effect”.); (g) the presentation of information; (h) an invention the publication or exploitation of which would be generally expected to encourage offensive or immoral behavior; (i) any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process; (j) a method of treatment of the animal or human body by surgery or therapy.
Plant patents: see under “V. New Plant Varieties“.
Novelty: is negated by (a) all matter which has been made available to the public anywhere by written or oral description, by use or in any other way; (b) matter contained in a patent application both as lodged and as open to public inspection if the priority date of that matter is earlier than the priority date of the invention; and (c) an invention used secretly and on a commercial scale within South Africa.
Priorities: multiple allowed. Time limits are however imposed on filing of a new application where priority is claimed on an earlier application or applications. Every claim in a complete specification is deemed to have effect from the earliest priority date claimed so long as it is fairly based on the contents of the priority document. An invention claimed may have more than one priority date.
Electronic filing: available.
Electronic signatures: have been accepted by the Registrar, although no official guidelines have been issued.
Filing requirements for an application (to be sent to resident agent):
1. Declaration and power of attorney signed by applicant (within six months of filing date);
2. Statement on the use of indigenous biological resource, genetic resource traditional knowledge or use (within six months of filing date);
3. Assignment of invention (and of priority rights if applicable);
6. An abstract, comprising the technical disclosure of not more than 150 words, and a copy of a figure of the drawings which best serves to illustrate the invention;
7. Certified copy of priority document (within six months of filing date), with a verified translation if in a language other than English.
Convention patent application – urgent filing:
A resident agent can file a Convention patent application on receipt of the following information:
1. Full name and address of applicant;
2. Number, country and date of basic application;
3. Title of invention.
The specification and drawings (if any) must be lodged within fourteen days of the filing date.
PCT applications: to initiate the national phase in South Africa, the Patent Office requires a form P.25 which includes:
1. Full name of the applicant;
2. Where possible the address of the applicant;
3. International application number, filing date and priority date;
4. Title of the invention;
5. An address for service in South Africa; and
6. The prescribed fee.
Time limit for entering the national phase in South Africa: under both Chapters I and II: 31 months, extendible to 34 months.
Late filing of documents: other documents that must follow are: (1) a completed form P.2 within two months of national filing; (2) a declaration and power of attorney within six months of national filing; (3) a statement on the use of indigenous biological resource, genetic resource traditional knowledge or use within six months of filing date; (4) an assignment of invention (and of priority rights if applicable); and (5) where the applicant has failed to comply with rule 17.1 of the regulations under the PCT, a certified copy of the priority document within six months of the national filing.
Examination: for form only and no examination for novelty undertaken.
Publication: a patent application comes open to public inspection after eighteen months from the earliest priority date. After acceptance, an abstract of the application is published in the Patent Journal. A patent is granted as of the date of its publication.
Opposition: not provided for.
Grant and sealing: as soon as practicable after publication of acceptance in the Patent Journal a patent shall be granted and the patent so granted shall be deemed to have been sealed with effect from the date of that publication.
Duration – extension: twenty years from the date of filing and no extensions of the patent term are obtainable; for a patent of addition, the duration of the main patent.
Renewal fees: at the end of the third year and annually thereafter.
Late payment: up to six months with fines.
Restoration: allowable if lapsing unintentional and there is no undue delay in applying. Third party rights acquired in the interval between lapsing and restoration are preserved.
Marking: not compulsory but advisable; the word “patented” followed by the patent number.
Assignments: by written deed or other instrument of title and registered to be effective against third parties. Fines imposed if registered after six months.
Amendments: if introducing new matter or leading to inclusion of claim not fairly based on specification content will be disallowed; no amendment of a complete specification after it has been granted shall be allowed if it includes any claim not wholly within the scope of a claim before amendment. If made after grant, amendments are advertised and open to opposition.
Modification of Protection after Granting
Licenses: need not be registered, but if not, are not binding upon third parties.
Compulsory licenses: on application to Commissioner of Patents (a) after three years from sealing or four years from date of filing, whichever is the later, on the grounds of non-working or inadequate working; (b) in respect of a “master” patent to enable a dependent patent to be worked, but for that purpose only, and (c) at any time during the life of the patent on various grounds of abuse set out below under “Working”.
Licenses as of right: patents may be so endorsed, when half government fees payable. The license is cancellable.
Working: the actual working of an invention is required. Non-working of a patent in South Africa could lead to the grant of a compulsory license, but not to cancellation. Any interested person who can show that the rights in a patent are being abused may apply to the Commissioner of Patents for a compulsory license. Such rights are deemed to be abused if: (a) the patented invention is not being worked in South Africa on a commercial scale or to an adequate extent, after the expiry of four years from the filing date of the patent or three years from the date of grant thereof, whichever expires last; and there is no satisfactory reason for such non-working; (b) the demand is not met to an adequate extent and on reasonable terms; (c) the patentee refuses to grant licenses on reasonable terms, where such refusal prejudices trade, industry, agriculture or any class of person(s) or the establishment of any new trade or industry in South Africa; or (d) the demand is being met by importation and the price charged by the patentee or his licensee is excessive in relation to the price charged in countries of manufacture.
Nominal working or an offer to license would not suffice in an application for a compulsory license on the grounds of inadequate working.
Infringement: no action for infringement can be instituted without leave of the Commissioner until nine months after the grant of a patent, but the action can relate to acts of infringement committed from the date of grant, but not before.
Litigation: the Commissioner of Patents hears all litigation under the Act in the Court of the Commissioner of Patents, with appeal to the High Court. Infringement and invalidity issues are dealt with together.