South Africa

table of contents

Intellectual property system in South Africa

South Africa is part of a group of emerging countries called VISTA, which are expected to develop economically, and is one of the countries whose importance as a market is increasing.

However, the number of applications filed by Japanese companies in South Africa is still small compared to those filed by companies in Western countries, and the current situation is that the country is not familiar with the country. Therefore, many people may not understand what the intellectual property system is in South Africa.

Therefore, we will explain what kind of intellectual property system South Africa has and how it differs from Japan's system, mainly with the case that South Africa is the second country to file an application. To go.

 

Statistical data on the number of applications and registrations

Number of applications XNUMX XNUMX XNUMX XNUMX
Patent Total number [items] 6,915 6,914 6,688 10,960
Foreign applications [cases] 6,258 6,347 6,146 9,156
From Japan [items] 206 203 179 170
PCT [items] 5,706 5,834 5,498 6,311
design Total number [items] 1,943 1,884 1,708 1,561
Foreign applications [cases] 966 908 738 833
From Japan [items] 78 73 43 32
商標 Total number [items] 38,362 37,371 36,323 39,863
Foreign applications [cases] 15,820 15,788 14,219 14,077
From Japan [items] 562 736 588 595
Number of registrations XNUMX XNUMX XNUMX XNUMX
Patent Total number [items] 4,746 6,162 3,466 6,107
Foreign applications [cases] 4,295 5,468 3,153 5,542
From Japan [items] 130 177 86 144
PCT [items] 3,906 5,011 2,860 3,975
design Total number [items] 1,520 1,884 1,495 1,668
Foreign applications [cases] 833 976 801 807
From Japan [items] 70 62 67 35
商標 Total number [items] 31,992 30,761 22,895 16,874
Foreign applications [cases] 15,247 14,049 10,873 6,712
From Japan [items] 726 575 499 292

(Source: WIPO IP Statistics)

 

 

Patent

Application route

South Africa is a member of the Paris Convention and the Patent Cooperation Treaty (PCT). Therefore, in order to apply to South Africa, it is possible to apply directly to South Africa by claiming priority under the Paris Convention (Paris route), or to file an international application under the PCT and have it filed within South Africa (PCT route). is.

The procedure for entering the national phase in South Africa after filing a PCT application is as follows:Within 31 months from the priority dateis. However, by paying an additional fee, you can complete the procedure within an additional three-month period.

Please note that South Africa is not a member of the African Regional Intellectual Property Organization (ARIPO) or the African Intellectual Property Organization (OAPI).

 

Application type

There are two types of patents in South Africa: regular patents (invention patents) and addition patents. On the other hand, in South Africa, there is no utility model system that protects minor inventions.

A patent of addition is a patent that is granted by filing a new application for adding, improving, or changing the invention described in the specification of the basic application or basic patent (main invention) (Article 39 of the Act). A patent of addition can be filed by the applicant of the basic application or by the same person as the patentee of the basic patent.

The term of protection granted to a patent of addition is the unexpired portion of the term of protection of the basic patent. Note that even if the basic patent is waived or canceled, the patent of addition typically continues to exist.

 

Documents required for application

The documents required to apply to South Africa are as follows:

(1) Application form

・The language of the proceedings is English.

(2) Specification, claims, abstract and necessary drawings

・You can submit statements, etc. in Japanese. In this case, submit a certified English translation within three months from the date of application.
- There is no limit to the number of independent claims.
・There is no additional claim fee.

(3) Oath and power of attorney

・Signed by the applicant. No authentication required.
・Submit within 6 months from the date of application. In the case of a PCT application, it must be submitted within 6 months from the date of entry into the national phase. Submission can be postponed upon request (Article 33 of the Rules).
・If a negative opinion has been expressed in the international phase or in a search report from another country, it is desirable to postpone the submission (for details, see “9. Invalidity of Patent” below)

(4) Assignment certificate

・Required if the applicant is not the inventor. Signed by the inventor. No authentication required.
・Submitted within 18 months from the date of application.

(5) Priority certificate

・Submit within 3 months from the date of application (extension possible). Not required when entering the national phase of a PCT application.

(6) Translation of priority certificate (English translation)

・Submit within 3 months from the date of application. In the case of a PCT application, it must be submitted within 6 months from the date of entry into the national phase.

(7) Priority transfer certificate

- Necessary if the applicant of the application on which the priority is based is different from the applicant of the South African application.

 

Also, when filing an application, it is necessary to indicate the international classification.

In addition, when filing an application claiming priority under the Paris Convention,(i)commission,(ii)Application signed by the applicant or his/her representative, and(iii)The filing date can be secured by clearly indicating the application number, date, name, and country of filing of the basic application (Article 30 of the Act). However, in this case, the specification and necessary drawings must be submitted within 14 days from the filing date.

 

Registration without examination

In South Africa, unlike Japan, patent applications are only subjected to formal examinations and no substantive examinations are conducted.Adopts non-examination registration principledoing.

When a patent application is filed, the Patent Office examines the formal requirements to see whether it meets the formal requirements of the application, and if it meets the formal requirements, it will be accepted. It takes approximately 6 to 9 months from application to acceptance. The examiner will reject the application if the invention falls under the grounds for non-patentability.

Once an application is accepted, it will be published in the patent gazette within three months from the date of acceptance. Patent rights take effect from the date of publication in the Patent Gazette, not from the date the patent application is accepted. The term of a patent right is 20 years from the filing date. There is no system for extending the shelf life of medicines, etc.

 

To have strong and stable rights in South Africa

In this way, South Africa adopts the unexamined registration system, so even patents with defects that do not meet the patent requirements (substantive requirements) can be granted patent rights. In the case of a defective patent that does not meet these patent requirements, the validity of the patent will be challenged in court after it is granted. Therefore, in order to obtain strong and stable rights without defects in South Africa, the following application procedures can be considered.

 

・PCT application

If you seek protection through the PCT route, the International Searching Authority will conduct a prior art search and obtain meaningful information regarding patentability. Therefore, by filing a patent application in South Africa via the PCT route and removing the defects in advance through amendments, with reference to the reports and opinions of the International Searching Authority, it is possible to obtain strong and stable rights free of defects. .

 

・Application for extension of application acceptance

As mentioned above, applications are usually accepted 6 to 9 months after filing, but by paying the prescribed fee and applying, the period for application acceptance can be extended ( Article 40 of the Act). Therefore, the acceptance of the application in South Africa is delayed until the corresponding application in other countries (such as JP, US, and EP) becomes patentable (grant granted), and the same By making amendments, you can obtain strong and stable rights that are free from defects.

The applicant can make amendments at any time before the patent is granted. The range of correction will be explained later.

 

A schematic diagram summarizing each period from application in the first country to expiration of rights is shown below.

Schematic diagram from first country application to extinguishment of rights

Schematic diagram from first country application to extinguishment of rights

 

Reasons for non-patentability

In South Africa, inventions that are not considered inventions under the law, such as mere discoveries or mental activities, and inventions that are contrary to public order and morals cannot be patented (Article 25 of the Act). Among these, the following points are different from Japan, so please be careful.

A. computer program

-Computer programs are not considered inventions under the law in South Africa and cannot be patented. However, computers that store specific computer programs in storage devices such as memory are subject to patent protection.

B. A method of surgical or therapeutic treatment on the human or animal body or a method of diagnosis performed on the human or animal body

・In Japan, while it is not possible to obtain patents for therapeutic and diagnostic methods for humans, it is possible to obtain patents for therapeutic and diagnostic methods for other animals. However, in South Africa, inventions of methods of surgical or therapeutic treatment on the body of animals or methods of diagnosis carried out on the body of animals, as well as on the human body, may be used or applied in commerce, industry or agriculture. It is considered impossible to do so, and therefore cannot be patented.

However, inventions consisting of substances or compositions used in methods of treatment or diagnosis of the human or animal body can be patented. Also, the fact that immediately before the priority date these substances or compositions formed part of the state of the art does not apply when the use of these substances in therapeutic or diagnostic methods does not form part of the state of the art. , does not prevent the granting of a patent (Article 25(9) of the Act).

C. Animal, plant and biological methods

- (i) a breed of animal or plant; (ii) an essentially biological process for the production of an animal or plant that is not a microbiological process; or (iii) a product obtained by such process. , cannot be patented.

 

Amendment to the specification

A patent applicant or patentee may apply for an amendment to the specification at any time using the prescribed method, but the content and effect of the amendment will be determined before, during and after the grant of the patent, as shown in the table below. differs depending on whether a lawsuit is pending (Article 51 of the Act).

Table 1. Differences in amendments before and after patent grant and during pending litigation

Before patent grant After patent grant Post-grant litigation pending
The applicant may make amendments at any time.
The details of the amendment and sufficient reasons must be presented.
Applications for written amendments should be filed with the Japan Patent Office. Applications for written amendments should be filed with the court.
This is a unilateral procedure and there are no objections. After amendment, it will be published and third parties can file an objection. If an objection is filed, the Commissioner will make a ruling. The court may stay the pending proceedings and transfer the amendment application to the Patent Office for publication and opposition.
Introduction of new matter or matter not substantially disclosed in the specification before amendment is not permitted.
Amendments that result in the amended specification containing claims that are not properly based on matters disclosed in the pre-amendment specification will not be accepted.
- Amendments that result in the amended specification including claims that do not fall completely within the scope of the claims contained in the pre-amendment specification will not be accepted.

 

Publication of application

The application will be published for public inspection 18 months after the earliest priority date (Article 18 of the Act). If the acceptance of the application is announced within XNUMX months from the earliest priority date, the application will be made available for public inspection after the acceptance is announced.

 

divisional application

In South Africa, a new application (divisional application) can be filed before the application is accepted (section 37 of the Act). As mentioned above, the acceptance of the parent application can be delayed by application.

A divisional application must relate to some of the matters disclosed in the parent application.

 

Invalidity of patent

Any person may petition the Court of Commissioner of Patents to invalidate a patent. Reasons for invalidity are listed in Article 61 of the Act.

When a request for invalidation is made, the Japan Patent Office will serve a request form on the patentee and give the patentee an opportunity to submit a written reply within a specified period of two months. If a written reply is not submitted within this period, the patent will be invalidated. If a written answer is submitted within this period, a hearing will be held and a decision will be made as to whether or not it is invalid.

 

Among the grounds for invalidity, Article 61(1)(g) requires attention.

If the oath contains a materially false statement, which the applicant would have known at the time of making the oath, the patent will be invalidated (Article 61(1)(g) of the Act). .

The declaration filed at the time of filing declares that, to the best of the applicant's knowledge, the patent application does not contain any legal grounds for invalidation after grant.

Therefore, for example, when filing an application through the PCT route, in a situation where a report denying novelty or inventive step has been made in the international search report or international preliminary examination report, you can proceed with the transition procedure as is and submit an oath. If you do so, your patent may be invalidated for making a false statement.

Therefore, if a negative opinion has been made at the international stage, it is necessary to resolve it through amendment before submitting the oath, or to delay the submission of the oath.

 

Infringement of patent rights

(1) Infringing acts

- If a patented invention is manufactured, used, or imported without proper title, it will be deemed a patent infringement (Article 45 of the Act).

- A claim regarding a patent for a method or device for producing a product is understood to extend to products produced by the claimed method or device (Article 67 of the Act).

In Japan, as a general rule, in the case of a patent for an invention of a device for producing a product, the effect of the patent right does not extend to the product produced by the device.

(2) Remedy method

- A patentee can demand (a) an injunction, (b) delivery of infringing products, etc., and (c) compensation for damages against the infringer (Article 65 of the Act).

 

 

 

design

Application route

It is possible to apply through the Paris route. *Not a member of the Hague Agreement

 

Application language

English or other official language.

 

Protection target

There are two types of protection, each with different registration requirements and duration.
 
 

Aesthetic Designs

A design applied to an article that appeals to the eye and has features that can only be evaluated visually.

Functional Designs

A design that is applied to an article and has the characteristics required by the function that the article performs.
Functional designs include the circuit layout of integrated circuits and mask work.

 

Documents required for application

  • ①Application form.
  • ②Drawings or photographs.
  • ③Description of the design.
  • ④Oath and power of attorney.
  • ⑤Deed of transfer.
      Submission required when requested.
  • ⑥Certificate of priority.
      Necessary when claiming priority.

 

Application publication

There is no application publication system. After registration, the contents of the registered design will be made public.

 

Objection system

There is no objection system.

 

Examination

There is no review request system.

Only a formal examination is conducted and the suitability of registration is determined without any substantive examination.

Reason for non-registration

  • ① If the design does not meet the definition of a design
  • ② When there is no possibility that the design related to the article will be mass-produced in the industrial production process
  • ③ If the requirements for registration of aesthetic designs and functional designs are not met
  •   *Aesthetic design registration requirements: be new and original
  •   *Requirements for registering a functional design: It must be new and not obsolete in the relevant technical field.

 

Invalidation trial system

Any person may apply to the court for invalidation at any time using the prescribed method for the following reasons:

  • ① If the reason for non-registration applies.
  • ② If the item lacks novelty or originality.
  • ③When the design is commonplace.
  • ④ Where the design registration application contains false facts regarding important parts thereof.
  • ⑤When a design is registered for something that does not have the right to receive design registration.

 

Duration of design right

Aesthetic design: 15 years from the date of registration (= filing date) or publication date, whichever comes first.

Functional design: 10 years from the date of registration (= date of application) or date of publication, whichever comes first.

 

System unique to design law

There is a design system for kumii.

 

 

 

商標

Application route

It is possible to apply through the Paris route.
*Not a member of Madpro

Application language

English or other official language.

Type of trademark

Word trademarks, figure trademarks, symbol trademarks, three-dimensional trademarks, and combination trademarks.

Protection target

Goods, services, collective marks, certification marks.

Applications by class heading are accepted.

Trademark classification

International classification (Nice classification) is adopted. (Not a member of the Nice Agreement)

One trademark multiple classification system

Not adopted.

Documents required for application

  • ①Application form: State the applicant's name, address, type of application (trademark, certification trademark, collective trademark, etc.), designated products, and classification. If priority is claimed, that information.
  • ②Trademark sample: Not required for word trademarks.
  • ③ Power of attorney: No authentication required. Submissions are possible until the application is accepted.
  • ④Priority certificate: Submit when claiming priority. Within 3 months from application.

Application announcement

After the registration is granted, the patent will be published in the Patent Gazette based on the applicant's application for publication.

Objection system

Within 3 months from the application publication date *3 month extension possible. Further extensions may be granted.

Examination

A formal examination and a substantive examination will be conducted.

Reason for non-registration

  •  ① Marks that do not meet the definition of a trademark
  •  ②Marks without distinctiveness
  •  ③A mark consisting only of indications indicating the type, quality, purpose, etc. of the goods used in transactions.
  •  ④ A mark consisting of the product shape, external shape, color, or pattern, where these elements are due to the characteristics of the product itself.
  •  ⑤ Items that are similar to prior trademarks and may cause confusion
  •  ⑥Marks including marks displaying international organizations such as national flags

Invalidation trial system

 There is no invalidation trial system. However, if the registration requirements are not met, a request can be made for cancellation of the trademark even after it has been registered.

Is there a non-use cancellation system?

There is a non-use cancellation system (when a registered trademark has not been used continuously for 5 years or more for the designated product or service).

Duration of trademark rights

10 years from the filing date. Renewal is possible every 10 years.

 

 

competent authority

Companies and Intellectual Property Commission (CIPC):http://www.cipc.co.za/


<Related page>
Foreign/Intellectual Property Translation Foreign Support Office Latest foreign information Information on emerging countries, etc. PCT Support Office

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