Proposed changes to patent accelerated acceptance in South Africa
On 11 January 2023 the South African Registrar of Patents sent an email with a draft Practice Note that:
- cautions applicants and law firms against filing South African patents that are copies of previously published patents; and
- notifies applicants that, as from 1 March 2023, the Patent Office only intends to permit requests for accelerated acceptance where a positive examination report has been issued in respect of a corresponding patent.
What are the basic requirements for a South African patent?
South African patent law has always required that patent applications are “novel” (i.e. new worldwide) and inventive (i.e. not obvious to an expert in the field).
Although the Patent Office does not conduct substantive examination of patents, patents that the applicant knows are not novel may not be filed with the South African Patent Office. Further, no law firm may file a South African patent where the firm is aware that the patent is not valid.
Novelty is an objective concept – does a prior publication / disclosure describe all the features in claim 1 of a patent?
Inventiveness is a subjective concept – is the novel feature in claim 1 obvious to an expert in the field? We believe that it is up to the Court / examiners to determine whether a claim is inventive. As long as the applicant believes that the new feature may be inventive, the applicant may file the patent.
Therefore, claim 1 of all South African patents (whether national phase, convention or direct patents) must include a new feature (that the applicant believes may be inventive). The applicant need not be certain of inventiveness.
Can South African patents that do not claim priority be filed after 1 March 2023?
Yes, South African patents that do not claim priority (i.e. direct patents) may be filed after 1 March 2023. However, applicants should ensure that claim 1 of the direct South African patent includes a new feature (that the applicant believes may be inventive), i.e. a feature that is not described in any prior publication.
“A feature” is typically something on a product that one can point to, or a step in a method.
Unless priority is claimed or unless a new (and arguably inventive) feature is added to claim 1, applicants may not file a previously published patent in South Africa.
Requirements for fair basis
All features in a claim must be fairly based on matter in the Description of Drawings, i.e. the feature must be described in the Description or shown in the Drawings.
Will South Africa start examining patents after 1 March 2023?
No. The South African Patent Office employs a team of examiners, but these examiners are undergoing training. During their training they cannot reject a patent. However, during training they have noticed that previously published patents are being filed directly in South Africa. The examiners will continue to monitor direct patents and, if invalid direct patents continue to be filed in South Africa, the Patent Office will take further action.
When South African Patent Law is changed to provide for substantive examination of patents, examination is expected to be limited to pharmaceutical patents, but this is not expected to occur in the short to medium term.
As long as claim 1 of a South African patent includes a new feature, a South African examiner cannot prevent the patent from being accepted or granted.
If accelerated acceptance is not requested for a South African patent how long will it take to receive the certificate?
If no accelerated acceptance is requested, a South African patent certificate should be issued within 11-12 months of filing.
If accelerated acceptance is requested, how long will it take to receive the certificate?
If accelerated acceptance is requested for applications filed before 1 March 2023 or after 1 March 2023, we expect to receive the certificate within 5-6 months of filing (i.e. similar to the current timelines).
The South African Patent Office has started to issue notices of acceptance electronically, so we expect acceptances to be issued quicker.
If a shorter period for issuance of the certificate is required, consider filing a Nigerian patent through GlobalIPCo.
Will South African patents that claim priority be scrutinized?
South African patents that claim priority are expected to be scrutinized less than direct patents, as the “prior published patent” would likely be the priority document. However, claim 1 of convention patents would of course still require a new feature.
What to do going forward?
- Ensure that claim 1 of all South African patents includes a new feature.
- If the Practice Note is implemented on 1 March 2023, do not thereafter request accelerated acceptance where no positive examination report has been issued in respect of a corresponding patent.
What not to do?
Do not file South African patents that are a copy of a previously published patent. Claim 1 of the South African patent must include a new feature.
Will the Practice Note come into effect on 1 March 2023?
The Practice Note is a draft Practice Note. There is a possibility that it may not be issued or that changes may be made to it before being issued. However, this is not likely.