PATENT FILING IN SOUTH AFRICA

In South Africa the Intellectual Property Rights are either registered or unregistered. Formal
applications for registering IP rights are made via the appropriate government channels while
the unregistered rights exist from the creation of IP.

A patent is a tool that grants the owner of the patent an unrestricted, exclusive right over an
invention—be it a system, composition, technique, or product—that offers a novel and
inventive technical solution to a problem. It prohibits others for a finite amount of time from
using the owner's innovation. But in order for others to use the invention after the patent
expires, the owner must fully disclose it in the patent specification in order to benefit from
this exclusivity.

The definition of patentable inventions is provided in Section 25 of the Patent Act, Act 57 of
1978 ", it states the items that can be patented:

1. Any new invention that combines an inventive step and can be used or applied in trade,
industry, or agriculture may be granted a patent, subject to the rules of this section.

2. For the purposes of this Act, the following shall not be considered inventions: Anything
that is composed of a discovery, a scientific theory, a mathematical method, a
literary/dramatic/ musical/ artistic or any other aesthetic creation, a scheme/rule/method for
performing a mental act/ playing a game or doing a business, a program for a computer, or
the presentation of information.”

These limitations only apply insofar as the innovation is related to the subject matter in
question. There isn't currently any South African case law defining the meaning of these
sections. There is a general consensus that South African courts may adopt a European-type
approach, requiring a "technical effect" for computer software and business techniques, as
established by the European Patent Office's Boards of Appeal.

Patent filing in South Africa

In order to get a patent granted in South Africa, one must accompany the patent application
with the complete patent specification. There are several options leading up to the filing of a
complete application.

Three general options are available:

(1) file a complete application right away, without filing any prior patent applications;
(2) file a provisional application to set a filing date or "priority" date; and

(3) in case the patent protection is sought in multiple foreign countries the PCT Route is
followed, thus allowing the same international application to be nationalized in multiple
countries at once.

It is also possible to use combinations of these procedures.

Three categories of patents are recognized by South African law: divisional patents, patents
of addition, and conventional patents. Normally, complete national patent applications and
conventional patent applications are approved within 12 to 15 months of the application's
filing date. After filing the national phase application in South Africa, a PCT national phase
patent application is normally granted in 15 to 20 months. An applicant may request a delay
in or extension of the acceptance process for their application. This is normally done when an
applicant is awaiting the results of a related application's examination in an examining
jurisdiction.

For a patent application a complete patent specification or a provisional one may be used to
support it. An invention is described in detail in a patent specification, which is frequently
supported by illustrations that aid in understanding.

In the event that your invention is in its early stage and additional developments or
advancements is probably required, we advise submitting a provisional patent application
first. Since the provisional specification will eventually serve as the foundation for the
complete specification, it is a crucial document. It ought to be meticulously and
professionally written, with as much information as possible. From a legal perspective, a
poorly drafted provisional specification could have no use at all.

A fresh patent application accompanied by a detailed specification is required to be filed after

a provisional patent specification. This needs to be filed "claim the priority" of the
provisional filing date and within 12 months of the provisional specification's filing date.
Also, only for South African patent applications a three-month extension of the twelve-month
period is possible upon payment of a fee.

A complete specification can be filed "in the first instance" if all of the details of your
invention have already been worked out; this means that filing a provisional patent
application is not required. As a result, expenses are less than for the temporary or full route.
Even though you may be able to file a complete application initially, you may prefer to file a
provisional specification initially if you only need temporary protection to test the
commercial viability of an invention. This was you are extending your potential patent
protection duration. A complete patent now entitles you to a total of 21 years, as opposed to
the previous 20 years (plus an additional 3 months in South Africa). Filing also has a lower
initial cost. (Note that: starting at the end of the third year, yearly renewal fees must be paid
in order to extend a South African patent's 20-year term.)

It is recommended that you file one or more additional provisional applications covering any
significant developments or improvements you make after filing a provisional patent
application and before the 12-month completion deadline. When you file for a complete
patent application you can "cognate"—that is, combine—the various provisional
specifications into a single, complete patent application. In South Africa, a patent can be
registered and granted in less than two years, measured from the date the complete
application was filed.

Following grant, the patent holder may apply for a "patent of addition" to protect further
advancements or modifications. It is necessary to consider whether an independent patent is
preferable to a patent of addition.

(Note: you only have a right of priority before grant over other patent applicants if filed for
the same subject matter.) Until a patent is approved by the Patent Office, you have no legally
binding patent rights. It's crucial to avoid giving the impression that you have patent rights in
the years leading up to grant. It is not advisable to issue verbal warnings or even letters
informing competitors that you have filed a patent application or applications. Serious
consequences apply to unjustified threats of infringement.

Requirements for a South Africa Patent Application

Minium filing requirements:

In order to obtain a filing date, one must provide the following necessary details to
Companies and IP Commissions:

- Name(s) and address(es) of applicant(s) and inventor(s);

- if priority under the Paris Agreement is to be claimed, the number, date, and country
of the priority application;
- Title of an invention (specifications, claims and drawings in any language must be
submitted within 14 days from the filing date);
 - Prescribed fee.

While examining patent applications, the South African Patent Office does not look into the
subject matter and will grant a patent for any topic, including well-known technologies. It is
imperative that you do not submit an application for technology that you are aware has
previously been sold or disclosed to the public, regardless of whether it was done so by you
or by another inventor and whether it happened in South Africa or any other country. This is
due to the fact that patents cannot be applied on technology that is already well known to the
general public. You must sign a Declaration attesting to the application's legality when you
file a patent. Fraud will be committed if that Declaration is false. Second, anyone in the
public can contest a patent's validity at any moment. Here are a few of the most typical
attack points:

- that the invention was not new in that, immediately prior to invention's priority date:
- that the invention was included in the first "state of the art"; or
- the invention was detailed in a patent application with an earlier priority date that was
later made available for public inspection; or
- that the invention was utilized covertly and commercially in the country (meaning you
cannot obtain a patent for an invention you have been selling to the public, although
you kept it as a secret).
- Considering the "state of the art," the invention was obvious to an expert in the field.

Patent PCT National Phase

For those wishing to obtain separate (national) patents in more than 140 countries, including
South Africa, the Patent Cooperative Treaty (PCT) serves as a temporary pathway. The
nations anticipated to be significant for patent protection are listed in a single PCT
international application. Typically, the 12-month provisional patent period ends with the
filing of this PCT application. You will receive an additional 18 months through the PCT
application, for a total of 30 months from your provisional priority date. Subsequently,
further distinct patent applications must be submitted to the different nations or areas of
interest. The filings that follow into the various countries or regions are referred to as the
"national phase," while the initial step is known as the "international phase."
When requesting protection under the PCT national phase, each national patent office has
certain requirements for the language to be used in the application and the application
procedures. As mentioned earlier, you have to file PCT international applications no later
than 12 months from the date your priority patent application was filed (that is, no later than
12 months after your South African provisional patent application was filed).

During the international phase, applicants have the opportunity to make changes to their PCT
application in response to an International Search Report and an International Preliminary
Report on Patentability, which are given at no additional cost to PCT applications.
Applicants can also establish their IP strategy and select PCT countries and regions of interest
for long-term patent protection during the 30-month international phase.

As previously mentioned, applicants must file their national applications into each country
and/or region of interest to them once the 30-month deadline for entering the PCT national
phase has passed (assuming they still intend to keep on seeking protection for their
invention).

Cost containment during the international phase (i.e., for the 30-month or two-and-a-half-year
term) is a major advantage of the PCT route. Applicants who are natural people, South
African citizens, and residents are eligible for a reduction on official costs. Before additional
costs are incurred for entering the national phase in each of the different PCT contracting
nations, the PCT International Search Report and Preliminary Report on Patentability
combined provide a good indication of the invention's potential.

References: -

1. https://iponline.cipc.co.za/Patents/PTInformation.aspx
2. Patent in South Africa- access here
3. Patents in South Africa- General Information – access here
4. EUIPO: AFRICA IP SME HELPDESK – SOUTH AFRICA, access here
5. In brief Patent Prosecution in South Africa- access here
6. Obtaining patent prosecution in South Africa: FAQs- access here