GlobalIPCo South African patent manual

South African patents are easily filed online through the GlobalIPCo online filing system.

Rights

A South African patent prevents others from:

• making, importing, using, disposing of (e.g. selling) or offering to dispose of (e.g. marketing) a product that falls within the scope of one of the patent claims; or
• exercising a method that falls within the scope of the patent claim,

within South Africa.

Validity requirements

The South African patent must include claims that are:

• novel (i.e. new / not publicly available worldwide); and
• inventive (i.e. not obvious to a person skilled in the field),

and have application in industry.

Exclusions:

• Discovery, scientific theory, mathematical method (except for practical application of such discovery, scientific theory of mathematical method);
• Literary, dramatic, musical or artistic work or other aesthetic creation, as these are protected by copyright or design registrations;
• Scheme, rule or method for performing a mental act, playing a game or doing business, albeit that the game board and game pieces may be patented;
• Computer program (similar to EU rules regarding computer programs);
• Presentation of information, as this is protected by copyright;
• Variety of animal or plant or any essentially biological process for the production of animals or plants, not being a microbiological process or the product of such a process, as this (in the case of plants) falls under the ambit of plant breeders’ rights; and
• Method of treatment of the human or animal body by surgery, therapy or diagnosis practised on the human or animal body, but excluding method steps performed outside of the body

Claim flexibility

South African patent law permits:

• multi-dependent claims;
• multiple independent claims (albeit that South Africa does require unity of invention); and
• reference numerals in claims.

Priority

A South African patent may claim priority from a patent application filed during the previous:

• 12 months; or
• 15 months (if the priority application is a South African patent application and a request for extension to claim priority is submitted).

Even where condonation for late filing (i.e. more than 12 months from the priority date) has been obtained from WIPO during the PCT phase, a request for extension to claim priority must be submitted when filing the South African national phase patent (irrespective whether the priority application is a South African or foreign patent application).

Documents to be lodged:

Where priority is claimed by a South African national phase patent and the priority document was lodged with WIPO:

• no priority document or English translation thereof needs to be lodged with the South African Patent Office.

Where the priority document was not lodged with WIPO or the South African patent application is a convention patent application:

• a certified copy of the priority document (in electronic format); and
• if the priority document is not in English: (i) an English translation of the priority document; and (ii) a notice from the translator confirming that the English translation is “true and correct”,

should be lodged with the South African Patent Office.

Template translator’s notice:

I, [translator’s name], confirm that the English translation of [patent no.] is true and correct.

_____________________

Signature

Correction:

The priority claim may be corrected within 2 months of filing.

Filing a South African national phase patent application

A South African national phase patent may be filed within 31 months from the earliest priority date (or the PCT filing date, if no priority is claimed), extendable to 34 months. Where required, the GlobalIPCo system automatically submits a request for extension of time to 34 months (without cost).

Upon filing, the South African national phase patent must mirror the PCT patent on file at WIPO. If:

• assignment of the patent to a new applicant;
• a change in the applicant’s name or address;
• a correction to the inventor’s name(s); or
• a correction or amendment of the PCT patent specification,

is required, these recordals, changes, corrections or amendments may only be made to the South African patent application after filing.

Requirements:

• PCT number;
• WO number (if the PCT patent has been published);
• Title of the invention;
• PCT / international filing date;
• Classification (only the main class, e.g. “B65D” is required);
• Abstract;
• Abstract image (if any);
• Applicant’s name and physical address;
• Each inventor’s name and country of residence;
• Priority number, date and country (if any);
• Signed Form P3, Form P26, Confirmatory Deed of Assignment and Power of Attorney* (electronic copies. No commissioning required); and
• PCT specification (with article 19 and article 34 amendments, if any).

If the priority document was not lodged with WIPO:

• Certified copy of priority document (electronic copy); and
• If the priority document is not in English: (i) an English translation of the priority document; and (ii) a notice from the translator confirming that the English translation is “true and correct”.

* Pre-populated forms are downloaded from the GlobalIPCo system.

Filing before the PCT patent is published:

It is preferable to file a South African national phase patent after publication of the PCT patent. However, if the South African national phase patent is filed earlier:

• The GlobalIPCo system requires the PCT Form 105 and the PCT specification to be uploaded; and
• The published PCT patent must be lodged with the South African Patent Office, upon publication.

Late lodging:

Outstanding document may be lodged within 6 months of filing, extendable on payment of a penalty.

The GlobalIPCo system late-lodges documents during the 6-month period (without cost).

GlobalIPCo pricing:

* Discounted pricing is available to law firms.

If 4 patents are included in a single parcel, the total cost is $496.50 per patent.

Pricing is fixed, irrespective of the number of priority claims, claims, pages, etc.

Note: Courier of the patent certificate is optional. Upon receipt of the certificate, a colour scanned copy (including accompanying forms and patent specification) will be emailed to you without charge.

Filing a South African convention / direct complete patent application

South African convention patent applications must be filed within 12 months of the priority date.

Requirements:

• Title of the invention;
• Classification (only the main class, e.g. “B65D” is required);
• Abstract;
• Abstract image (if any);
• Applicant’s name and physical address;
• Each inventor’s name and country of residence;
• Priority number, date and country (if any);
• Signed Form P3, Form P26, Confirmatory Deed of Assignment and Power of Attorney* (electronic copies. No commissioning required);
• Patent specification (description, claims and drawings (if any));

If priority is claimed:

• Certified copy of priority document (electronic copy);
• If the priority document is not in English: (i) an English translation of the priority document; and (ii) a notice from the translator confirming that the English translation is “true and correct”.

* Pre-populated forms are downloaded from the GlobalIPCo system.

Differences between the South African convention patent and the priority document:

• The South African convention patent specification need not mirror the priority document. However, in order to retain the priority date, the features in claim 1 of the South African convention patent specification must be described in the priority document.
• The list of inventors in the South African convention patent application may be different from the list of inventors in the priority document, provided that at least one inventor is common.
• The applicant in the South African convention patent application may be different from the applicant in the priority document, provided that a cession of right to claim priority is lodged with the South African Patent Office.

These changes can be made on filing the South African convention patent.

Late lodging:

Outstanding document may be lodged within 6 months of filing, extendable on payment of a penalty.

The GlobalIPCo system late-lodges documents during the 6-month period (without cost).

GlobalIPCo pricing:

* Discounted pricing is available to law firms.

If 4 patents are included in a single parcel, the total cost is $496.50 per patent.

Pricing is fixed, irrespective of the number of priority claims, claims, pages, etc.

Note: Courier of the patent certificate is optional. Upon receipt of the certificate, a colour scanned copy (including accompanying forms and patent specification) will be emailed to you without charge.

Process

The South African Patent Office conducts formal examination of patents, but not substantive examination. However, the South African Patent Office does check for “duplicate patents” (i.e. South African patents that are copies of earlier published patents from which priority is not claimed).

Timelines:

Acceptance: within 6-9 months of filing

Publication: within 3 months of acceptance (the journal publishes on the last Wednesday of each month (other than December))

Issuance of certificate: within 2-3 months of publication

The date of publication of a South African patent is deemed to be the date of grant.

Expedited acceptance:

If a positive examination report has been issued in respect of a corresponding patent application (e.g. IPER), a request for expedited acceptance may be submitted, which reduces the time from tiling to acceptance to about 3 months. A positive examination report is one where at least one claim was found to be novel and inventive.

Delay of acceptance

To effect claim amendments pre-grant, applicants may wish to delay acceptance (which normally occurs 9 months after filing).

If accepted, acceptance may be withdrawn and delayed.

Acceptance may be delayed until:

• In respect of South African convention / direct complete patent applications: 21 months from the South African patent filing date; or
• In respect of South African national phase patents: 15 months from the South African patent filing date.

Further delay may be requested on “good cause shown”.

Total GlobalIPCo cost (inclusive of official fees):

Corrections

Correction of:

• applicant’s or inventors’ names or addresses;
• forms, and
• clerical errors in the patent specification,

may be made on Form P4.

Cost:

GlobalIPCo processes:

• corrections (other than the correction of clerical errors in the patent specification, where the instructor made an error on filing) without charge; and
• corrections of clerical error in the forms for $150 (inclusive of R90 official fee).
• corrections of clerical error in the patent specification for $250 (inclusive of R90 official fee).

Requirements:

To correct clerical errors in a patent specification, the Form P4 must include:

• a version of the patent specification showing corrections made in tracked format;
• a certificate confirming that the document showing corrections in tracked format is based on the original patent specification; and
• a clean version of the specification (i.e. with tracked changes accepted), stamped in the footer “Corrected sheet dated …”

Time:

A correction takes about 4 weeks to be effected.

Note: The GlobalIPCo system must be updated when a correction is submitted.

Amendment

Pre-grant

Prior to grant, any amendments may be made to the patent claims on Form P12, provided that the amendments are “fairly based” (i.e. were described or disclosed in the original patent specification). A portion or all of the claims may be substituted to broaden or narrow their scope.

It is preferable not to amend the Description or the drawings.

Cost:

GlobalIPCo processes pre-grant amendments for $250 (inclusive of R70 official fee).

Requirements:

An application to amend a patent application pre-grant must include:

• a form P12 that provides full reasons for all amendments made;
• a version of the patent specification showing amendments made in tracked format;
• a certificate confirming that the document showing amendments in tracked format is based on the original patent specification; and
• a clean version of the specification (i.e. with tracked changes accepted), stamped in the footer “Amended sheet dated …”

Pre-grant amendments are not published.

Time:

A pre-grant amendment takes about 4 weeks to be effected.

Note: The GlobalIPCo system must be updated when an amendment is submitted.

Suggested “reasons” for amendments:

• To insert new claim …, thereby to provide more comprehensive protection for the invention.
• To amend original claim …, thereby to distinguish the invention more fully over [cite relevant prior art].
• To amend original claim …, thereby to broaden the scope of the claim.
• To amend original claim …, thereby to define the scope of the claim more clearly.
• To clarify claim … by deleting the preferred feature and making the feature the subject of a new dependent claim.
• To clarify the wording of claim ….
• To delete original claim … following incorporation of this claim into claim ….
• To delete original claim …, thereby to disclaim an embodiment of the invention.
• To ensure consistency in terminology used in the claims.
• To establish proper antecedent basis for “[enter]” in claim ….
• To convert non-metric units with metric units.
• To introduce a “Swiss-type” claim that correspond to claim …, thereby to obtain more comprehensive protection for the invention.
• To make consequential changes to the numbering and dependencies of the claims in light of the above amendments.

Post-grant (i.e. filed after publication of the patent)

After grant / publication of the patent, an amendment may be made to the patent claims on Form P13, provided that the amendment:

• does not increase the scope of the claims (e.g. the amendment should not delete words from an independent claim); and
• is “fairly based” (i.e. the amendment was described or disclosed in the original patent specification).

It is preferable not to amend the Description or the drawings.

Cost:

GlobalIPCo processes post-grant amendments for $300 (inclusive of R242 official fee).

Requirements:

An application to amend a patent application post-grant must include:

• a form P13 that provides full reasons for all amendments made;
• a version of the patent specification showing amendments made in tracked format;
• a certificate confirming that the document showing amendments in tracked format is based on the original patent specification; and
• a clean version of the specification (i.e. with tracked changes accepted), stamped in the footer “Amended sheet dated …”

Once accepted by the Patent Office, the amendment will be published in the Patent Journal and lie open to opposition for a period of 2 months.

Time:

A post-grant amendment takes about 4 months to be effected.

Note: The GlobalIPCo system must be updated when an amendment is submitted.

Sequence listing

South Africa does not dictate a specific format for submission of sequence listings. We suggest uploading a PDF version of the sequence listing to the GlobalIPCo system on filing.

If the sequence listing was lodged with WIPO, a copy need not be lodged with the South African Patent Office.

Renewal

A South African patent must be renewed on the third anniversary of the:

• PCT / international filings date (in respect of South African national phase patents); or
• South African filing date (in respect of convention or direct complete patents),

and annually thereafter.

A total of 17 renewals are payable for South African patents.

Delay until grant:

Where a South African national phase patent is granted (i.e. published) more than 33 months from the PCT / international filing date, the first renewal may be delayed until the sixth month following grant / publication. However, delaying payment of renewals until grant of the South African patent is not recommended.

* Additional $25 is charged if the renewal is not processed online

Pre-payment:

All 17 renewals may be paid upfront via the GlobalIPCo system for:

• Where GlobalIPCo / S&Z filed the patent: $385*
• Where GlobalIPCo / S&Z did not file the patent: $485*

* Discounted pricing is available to patent law firms.

Late-payment:

Renewals may be paid during the 6 month grace period on payment of a penalty (R90 for the first month and R50 for each subsequent month, i.e. maximum R340). The PayAnnuity renewal system charges: (i) the manual renewal fee; and (ii) $25 in professional fees for paying the late payment penalty.

Patent infringement – Procedure

1. The applicant obtains evidence of infringement.
2. The applicant typically effects a post-grant amendment of the South African patent claims to align them with granted claims in other examining jurisdictions.
3. The applicant sends a letter to the infringer, notifying the infringer of the patent.
4. The patent attorneys on both sides attempt to resolve the dispute.
5. If the dispute cannot be resolved by the attorneys, infringement proceedings are instituted in the Commissioner of Patents Court (a part of the South African High Court system that is specifically set up to hear patent disputes).
6. As a defence, the infringer typically counterclaims invalidity of the patent.
7. The applicant amends the claims and/or submits responses to the counterclaim, with disputes regarding the amendments / invalidity decided by the Commissioner of Patents.
8. After the counterclaim of patent validity is settled by the Commissioner of Patents, the issue of infringement is heard and decided by the Commissioner of Patents.
9. Decisions of the Commissioner of Patents may be appealed to the full bench of the High Court or to the Supreme Court of appeals.

How to file: South African national phase patent

1. Register on GlobalIPCo.com (there is no subscription / license fee. You are only charged for actions instructed)
2. Receive a discount code that reduces pricing for law firms and add this to your profile; and
3. Complete the South African patent (national phase) application form – all information required is extracted from the WIPO website – Need more help?:

How to arrange publication

1. Click INSTRUCT PUBLICATION

2. Click INSTRUCT PUBLICATION

How to arrange courier

1. Select a record and click REQUEST COURIER

2. Click GROUP OTHERS WITH THIS CERTIFICATE

3. Select other case to be grouped in the courier parcel

4. Add other cases until the parcel includes 4 patents (i.e. the original case plus the 3 added cases)

5. Click SAVE to courier all 4 certificates in a single courier parcel