The cost of obtaining a patent may seem exorbitant for individual entrepreneurs or start-ups, but IP protection may be critical to their success. Patent attorneys' fees are often comparably higher than those of other attorneys – so why pay a patent attorney to file a patent application?

In South Africa, any party can legally file a provisional patent application. However, a provisional application does not result in a patent and protects the invention for only 12 months from the filing date. A complete patent application must be filed before this period expires, otherwise the application becomes abandoned.

By law, qualified patent attorneys must sign completed patent specifications before they are filed. Does this mean that a party could save costs by drafting and filing a provisional patent application itself and asking a patent attorney to sign the completed application 12 months later? Similarly, could it file a provisional patent application and then ask the patent attorney to prepare the complete patent application?

Although these options are possible, they come with pitfalls which are sometimes non-rectifiable. For instance, applicants often included insufficient or incorrect information about the invention in a provisional specification, resulting in the patent attorney being unable to draft the complete specification in a manner that adheres to the legal requirements. Some patent attorneys may be willing to sign a complete specification without reviewing its contents, but this is inadvisable and more likely to result in an invalid application.

Multichoice South Africa (Pty) Ltd v Barron (2014 BIP 121 (CP)) highlights what can go wrong if a properly qualified patent attorney does not draft a specification. In this case, the applicant successfully revoked the respondents' patent on the basis of, among other things, the fact that the specification insufficiently disclosed how a person skilled in the art could make the invention work. The respondents lost their monopoly because of their failed patent and had to pay both their own and the applicant's legal fees.

Drafting patent specifications is a skill that patent attorneys acquire through years of practice and with understanding of the intricate legal requirements to which a patent specification must adhere. The importance of appropriately protecting intellectual property for any business – particularly small businesses or individuals – cannot be overstated, as correcting a patent application may be expensive and even impossible in some circumstances. Thus, getting a patent specification right the first time might well be worth the costs involved.

For further information please contact Christina Louw or Fredo Ströh at KISCH IP by telephone (+27 11 324 3000) or email (christinam@kisch-ip.com or fredos@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

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