Filing patent applications
Patent protection in countries other than South Africa
A patent is an instrument that gives the owner thereof an exclusive monopoly right over an invention, such as a product, process, system or composition, that provides a new and inventive technical solution to a problem.
The grant of a patent prevents others from exploiting the owner's invention for a limited period. However, to enjoy this exclusivity, the owner must fully disclose the invention in the patent specification so that others may exploit it once the patent expires.
This article answers FAQs about patent protection in South Africa.
What does the filing process involve?
To obtain the grant of a patent in South Africa, it is necessary to file a patent application accompanied by a complete patent specification.
It is important to note that patents are national rights rather than international rights. Thus, it is generally necessary to file a patent application in each country in which protection is required.
There are several options leading up to the filing of a complete application.
In general, three routes may be followed:
- file a complete application immediately, without filing earlier patent applications;
- file a provisional application to establish a filing or "priority" date, with the complete application being filed within 12 months of the provisional application; or
- if patent protection is sought in multiple foreign countries, the Patent Cooperation Treaty (PCT) is often used, which allows the same international application to be nationalised in more than one country at one time.
Combinations of these processes can also be used.
What is a patent specification?
The document that describes the invention is known as a "patent specification". It not only describes the invention but also defines, in the patent claims, the specific features of the invention that enjoy patent protection.
What is a priority date?
The priority date of an invention is the date on which the first patent application in respect of the invention is filed. This is also the date on which novelty and inventiveness of the invention is adjudicated.
What rights does a patent grant?
Once a patent is granted in South Africa, the owner of the patent is entitled to prevent others from carrying out a range of commercial activities relating to that invention. In particular, the owner can prevent others from performing any of the following acts:
- making the patented invention in South Africa;
- importing the patented invention into South Africa;
- using or exercising the patented invention in South Africa; and
- marketing, selling and licensing a patented invention in South Africa.
What limitations are there to a patent right?
A patent right is restricted in a number of ways.
Firstly, it is limited to the country in which the patent is granted. For example, if the patent is granted in South Africa, it is only enforceable in South Africa.
Secondly, it is limited to a maximum term, subject to renewal fees being paid to maintain the patent in force. In South Africa, the maximum term is 20 years from the effective filing date.
Finally, the claims of the patent define the specific features of the invention that enjoy protection under the patent and the protection is therefore limited to the scope as set out in the claims.
What inventions will qualify for patent protection in South Africa?
An invention can take several forms, including:
- a process;
- a method;
- a machine;
- a device;
- a material;
- a chemical compound; or
- a chemical composition.
However, the South African Patents Act provides for certain exclusions from patentability, and it is therefore advisable to seek expert advice from a qualified patent attorney.
To be eligible for patent protection, an invention must:
- be new, in that it is not known anywhere in the world at the time of filing the first application;
- not be an obvious variation of known technology; and
- be capable of being applied in trade, industry, or agriculture.
Is it possible to check whether an invention will qualify for patent protection in South Africa?
Searches may be conducted to determine whether an invention is novel. The aim of a search is to identify what is referred to as "prior art", which is essentially anything that describes a similar invention already known to the public prior to the filing date of the first application for the invention in question. Identifying this prior art is a critical step in determining whether an invention is patentable and whether meaningful patent protection can be secured for the invention.
These searches can be conducted using several different sources and/or combinations of the following:
- the inventor's knowledge in the field of the invention;
- the Internet;
- dedicated online patent databases;
- keyword searches through the records of the South African Companies and Intellectual Property Commission; and
- technical literature.
These different types of searches vary in complexity, reliability and cost, depending on the complexity of the invention and the field of technology involved.
It is advisable to seek specialist searching services from a patent attorney to ensure that the results are accurate and comprehensive.
Patent protection in countries other than South Africa
How do can patent protection be obtained in countries other than South Africa?
Bearing in mind that a patent granted in South Africa will only provide patent protection in South Africa, the applicant must also decide during the patenting process whether patent protection is required in other countries.
Where the priority application is filed in South Africa, the processes to pursue patent protection for the invention in other countries involve either one of the following routes:
- filing complete patent applications directly in the countries where protection is sought within 12 months of the priority date, and prosecuting these applications to grant of the various national patents in those countries; or
- filing an international patent application under the PCT (this application is referred to as a "PCT application") within 12 months of the priority date, and then nationalising the PCT application in each country where protection is sought.
What is the PCT?
The PCT is an international treaty that provides a unified procedure for filing patent applications across its member countries (currently 155 countries, including South Africa).
A PCT patent application does not result in an "international patent" being granted. In fact, there is no such thing as a "worldwide" or "international" patent. At the end of the PCT application process, the applicant is still obliged to file national patent applications in each country in which protection is sought.
A PCT application must be filed within 12 months of the priority date of the invention. Thereafter, the examining office conducts a search to identify prior art relevant to the invention and issues a preliminary patentability opinion. This opinion provides a good indication of the patentability of the invention before substantial costs are incurred. The various national applications must be filed in the various counties within 30 or 31 months from the earliest priority date, depending on each country's legislation.
For further information on this topic please contact Marco Vatta or Herman van Schalkwyk at Spoor & Fisher by telephone (+27 12 676 1111) or email ([email protected] or [email protected]). The Spoor & Fisher website can be accessed at www.spoor.com.