In brief: patent prosecution in South Africa

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A patent may be granted for any new invention that involves an inventive step and is capable of being used or applied in trade, industry or agriculture. However, certain subject matter is explicitly excluded from being considered being inventions. These are:

• discoveries;
• scientific theories;
• mathematical methods;
• literary, dramatic, musical or artistic works, or any other aesthetic creation;
• schemes, rules or methods for performing a mental act, playing a game or doing business;
• computer programs; and
• the presentation of information.

However, these exclusions apply only to the extent to which the invention relates to the subject matter as such. At present, there is no case law in South Africa interpreting the meaning of these sections. For computer software and business methods, there is a general view that South African courts may follow a European-type approach requiring a ‘technical effect’, as laid down by the Boards of Appeal of the European Patent Office.

An invention of a method of treatment of the human or animal body by surgery or therapy, or of diagnosis practised on the human or animal body, is deemed not to be capable of being used or applied in trade, industry or agriculture, and therefore not patentable. Second medical uses of known substances are, however, patentable if claimed by way of Swiss-type claims. The law also provides that, in the case of an invention consisting of a substance or composition for use in such methods of treatment, the fact that the substance or composition is not new shall not prevent a patent being granted for the invention, if the use of the substance or composition in any such method is new.

A patent shall also not be granted for any variety of animal or plant or any essentially biological process for the production of animals or plants, but a microbiological process or the product of such a process is patentable.

Finally, a patent shall also not be granted for subject matter that is obviously contrary to natural laws, or subject matter that encourages offensive or immoral behaviour.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

An application for a patent in respect of an invention may be made by the inventor or by any other person acquiring from the inventor the right to apply, or by both the inventor and such other person when there has been a partial assignment of invention. If the applicant for a patent is not the inventor, then the applicant is required to prove its entitlement to apply for or be granted a patent. Proof of transfer may be in the form of a deed of assignment, an employment contract, a contract to do something or by operation of law.

An invention made by an employee that falls within the course and scope of the employee’s employment with an employer is owned by the employer. The Patents Act provides that any condition in an employee’s contract of employment that requires the assignment of an invention made by the employee outside of the employee’s course and scope of employment, or that restricts the employee’s right in an invention made more than one year after the termination of such a contract, will be null and void and is therefore not enforceable.

An invention made by an independent contractor requires an explicit written assignment of right to the party instructing the contractor for any right to the invention to be transferred. Without a written assignment, the invention made by the independent contractor is owned by the contractor.

In the absence of an agreement to the contrary, joint inventors may jointly apply for a patent, and will have equal undivided shares in the application. The rights in the application will be encumbered in that the individual co-applicants will not be allowed, without the consent of the other joint applicant or applicants, to deal in any way with the application except where proceedings are required to keep the application from being abandoned.

An assignment of a patent or patent application must be in writing, but no other formalities are prescribed or required. An assignment of rights can be recorded in the patent register, but there is no requirement for the assignment to be recorded to have effect between the parties. However, where such an assignment is not recorded, the assignment will only be valid between the parties thereto. An application to record an assignment must be lodged with the South African Patent Office within six months of the event entitling the recordal. A request is to be made for the condonation of the late recordal should the assignment not be recorded within six months of the effective date thereof.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

A South African complete patent application and a convention patent application typically proceed to grant between 12 and 15 months from the date of filing the application. A national phase patent application typically proceeds to grant between 15 and 20 months from the date of filing the national phase application in South Africa. It is possible to delay and extend the acceptance of an application at the request of the applicant. This is usually done where the applicant is awaiting the outcome of examination of a corresponding application in an examining jurisdiction.

The cost of filing a convention patent application and a national phase patent application generally amounts to between US$1,000 to US$2,000. Renewals are payable annually from the third year after the South African filing date for a convention application or the international filing date for a national phase application.

Are there any procedures to expedite patent prosecution?

South Africa is not part of the Patent Prosecution Highway, but a patent application generally proceeds to grant relatively quickly due to the lack of substantive examination. It is also possible to apply to the Registrar of Patents to expedite the grant of a pending patent application. In such a case, provided the application meets all of the required formalities, the application will usually proceed to grant between two and four months from making an application.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

The specification of a provisional patent application is required to fairly to describe the invention. The specification of a complete patent application, such as a convention patent application and a national phase application, is required sufficiently to describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which the invention is to be performed in order to enable the invention to be performed by someone skilled in the art. Such a specification is also required to end with a claim or claims defining the invention for which protection is claimed. The claims are required to be clear, to relate to a single invention and to be fairly based on the matter disclosed in the specification. South Africa is party to the Budapest Treaty, and where an invention relates to a micro-biological process or product derived therefrom, the deposit system in accordance with this treaty applies. No claim or page limits are applicable and multiple dependencies are allowable.

Must an inventor disclose prior art to the patent office examiner?

An inventor does not have to disclose prior art to the South African Patent Office. However, in view of the duty on the applicant to ensure that the patent is maintained in an allowable form it is imperative that any invalidity that the applicant is aware of be cured by way of amendment.

It is a ground of revocation of a South African patent if ‘the declaration (in the Form P3) contains a false statement which is material and which the patentee knew or ought reasonably to have known to be false at the time that the declaration was made’. In this regard, the Form P3 states ‘to the best of my/our knowledge and belief, if a patent is granted on the application, there will be no lawful ground for the revocation of the patent’. It is thus imperative that if the applicant is aware of any invalidities in the specification or claims that these invalidities should be cured by way of amendment before grant. This is particularly relevant to the right of applying and being granted a patent for an invention and any adverse patentability opinions received in examining jurisdictions.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It is possible to file one or more divisional patent applications stemming from a parent patent application prior to the acceptance of the parent application. A divisional patent application is made in respect of part of the matter disclosed in the parent application and is therefore limited to subject matter disclosed in the parent application.

It is also possible to file a patent of addition for any addition to, improvement in or modification of the invention of a granted patent. A patent of addition must be novel but may not be invalidated on the grounds that it does not contain an inventive step over the main invention. Unlike a divisional patent application, which is recognised as a fresh patent application that is independent of the parent patent application, a patent of addition is not severable from the patent of the main invention.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The South African Patent Office does not conduct substantive examination and a patent will accordingly be granted provided all of the formal requirements are met. A decision made by the registrar may be appealed or reviewed, but such action is limited to decisions relating to procedural or formal issues.

Does the patent office provide any mechanism for opposing the grant of a patent?

No mechanisms for opposing the grant of a patent in South Africa exist. However, any person may apply for the revocation of a patent any time after the patent has proceeded to grant.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

South Africa follows the first-to-file principle, and the first applicant to have filed a patent application directed to an invention will therefore have the right to priority, irrespective of who was first to invent the invention. The South African Patent Office does not provide any mechanism for resolving priority disputes but does provide for mechanisms for resolving disputes that may arise between persons and their rights to apply for and be granted a patent.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

As there is no examination of the merits of a patent application in South Africa, a patent application will proceed to grant if no voluntary amendments are filed. However, there are provisions for the voluntary amendment of the patent application before or after granting the application.

Prior to the application being granted, any voluntary amendment may be made, provided:

• no new matter, or matter not in substance disclosed in the specification before amendment, is added; and
• any amended claim is fairly based on the matter disclosed in the specification before the amendment.

The same limitations apply to post-grant amendments. However, there is an additional limitation in that a post-grant amendment cannot result in a claim that does not fall within the scope of a claim prior to amendment. The scope of the broadest claim may accordingly not be broadened during a post-grant amendment.

South African law also provides for the amendment of a patent in the course of legal proceedings. Where legal proceedings are pending in a court in relation to a patent application or patent, then an application for the amendment of such patent application or patent must be made to that court. All the requirements for a normal post-grant amendment will apply.

The law provides a number of exhaustive grounds on which a patent may be revoked. A patent may be revoked on any one or a combination of these grounds.

How is the duration of patent protection determined?

The duration of a patent is 20 years calculated from the date on which a complete patent application or a convention patent application is filed in South Africa, or 20 years calculated from the filing date of an international application (Patent Cooperation Treaty patent application) that has entered South Africa in the national phase.

Law stated date

Give the date on which the information above is accurate.

1 March 2021.