The Patent System in South Africa
South Africa is part of VISTA, a group of emerging countries expected to experience a strong economic development in the future, and has been under the spotlight recently due to its importance as a rising market.
Yet Japanese corporations remain unfamiliar with the idea of applying in South Africa, and thus file only a limited number of applications in South Africa compared to European and American corporations. It is therefore likely that many still lack a proper understanding of the patent system existing in South Africa.
Here we wish to consider the South African patent system in its specificities, as well as in its differences with the Japanese patent system, in a situation where South Africa is the second country of filing.
1. Application Routes
South Africa is a member of both the Paris Convention and the Patent Cooperation Treaty (PCT). Therefore, in order to apply to South Africa, beside applying directly to South Africa and claiming priority under the Paris Convention (Paris route), the applicant is also able to file an international application through the PCT and to enter it into the National Phase in South Africa (PCT route).
When the applicant applies by first filing a PCT international application, the deadline for entering the national phase in South Africa is set to 31 months from the priority date. However, by paying an additional fee, the procedures to enter the application into the National Phase may be delayed until the end of an additional three-month period.
It must also be noted that South Africa is a member of neither the African Regional Industrial Property Organization (ARIPO) nor the African Intellectual Property Organization (OAPI).
2. Types of Applications
South African patents are divided into two categories: regular patents (invention patents) and patents of addition. There is no utility model system for the protection of small-scale inventions as in Japan. Patents of addition may be granted regarding applications which include additions, improvements, or modifications to the invention described in the specification of a basic application or basic patent (main invention) (Section 39 of the Patents Act). In such a case, the person applying for the patent of addition should be the applicant of the original application or the patent holder of the original patent.
The period of protection granted for a patent of addition corresponds to the period of protection remaining for the original patent. The patent of addition usually remains in force even if the original patent is withdrawn or cancelled.
3. Necessary documents to lodge an application
The necessary documents to file a patent application in South Africa are as follows.
- 1) Front page (the language used throughout the application process is English)
- 2) Specification, claims, abstract, and necessary drawings
・The application documents may be filed in Japanese; in this case, it is necessary to submit a certified English translation within three months from the lodging date.
・There is no limitation to the number of independent claims.
・There is no surcharge for extra claims.
- 3) Declaration and Power of Attorney
・To be signed by the applicant; legalization not necessary.
・To be submitted within six months from the lodging date, or within six months from the date of entry into the National Phase in South Africa for PCT applications. The due date for submission of the above documents is extendable upon request (Rule 33).
・In a case where an objection(s) to the application has(have) been raised in, for example, the International Search Report or the Search Reports issued in other countries, it is preferable to extend the due date for submission of the above documents (For more details, see "9. Revocation of patent" below).
- 4) Assignment
・Required if the applicant is not the inventor. To be signed by the inventor; legalization not necessary.
・To be submitted within 18 months from the lodging date.
- 5) Certified priority document
・To be submitted within three months from the lodging date (extendible). Not required in the case of the National Phase in South Africa of a PCT application.
- 6) English translation of the Certified priority document
・To be submitted within three months from the lodging date for applications following the Paris route, and within six months from the date of entry into the National Phase in South Africa for PCT applications.
- 7) Assignment document of the priority right
・Necessary when the applicant of the application whose priority right is claimed in the South African application and the applicant of the South African application differ.
The application should also indicate the International Patent Classification (IPC) number.
An application claiming priority under the Paris Convention is able to obtain a lodging date provided that it is accompanied by the prescribed fee and the prescribed application form signed either by the applicant or his agent, and that the prescribed form includes the number, date and title of the relevant application in the convention country from which such convention application claims priority, as well as the name of the convention country (Section 30 of the Patents Act). However, in this case, the specification and drawings (if any) must be lodged within 14 days from the lodging date of the application.
4. Non-examination system
Unlike Japan, South Africa’s patent system follows a principle of non-examination, in which patent applications are examined on a formal level but not on a substantive level before registration.
When a patent application is filed, the Companies and Intellectual Property Commission (CIPC; the “patent office” of South Africa) examines whether or not the formal requirements are met; if the formal requirements are met, CIPC accepts the application. It usually takes about six to nine months from filing to acceptance. CIPC refuses the application when the invention falls under the category of unpatentable invention.
Once an application has been accepted, the CIPRO publishes the application in the Patent Journal within three months from the date of acceptance. The patent right takes effect on the date of publication of the Patent Journal and not on the date of acceptance of the application. A patent right is valid for twenty years from the lodging date.
How to obtain strong, stable rights in South Africa
Because South Africa follows such a non-examination system, even flawed applications not meeting patentability requirements (i.e. substantive requirements) are likely to be granted a patent. The validity of such flawed applications may then be challenged in court after a patent has been granted. Accordingly, the following strategies may be considered to ensure the acquisition of strong, stable rights in South Africa.
Seeking to obtain protection via the PCT Route makes it possible to obtain valuable information on the patentability of the application, via the prior art examination conducted by the International Search Authority. As a result, using the search report and the opinion of the International Search Authority as reference material allows the applicant to amend the application so as to eliminate flaws, thus ensuring the acquisition of a strong, stable right.
・Extension of time for the acceptance of the application
We mentioned above that an application is usually accepted six to nine months after filing; however, the submission of a request accompanied by the payment of a determined fee makes it possible to obtain an extension of the period until the application is accepted (Section 40 of the Patents Act). Accordingly, by purposefully delaying the acceptance of a South African patent application until the corresponding Japanese, US, or European applications are deemed patentable by the respective patent offices, it becomes possible to conduct regarding the South African application the same amendments as those conducted towards the foreign applications. This makes it possible to ensure the acquisition of a strong, stable right in South Africa.
The following is a diagram of the various periods from the filing of the application in the first country of filing up to the expiration of the patent right in South Africa.
Diagram of the patent process from the filing of the application in the first country of filing until the expiration of the patent right in South Africa
5. Unpatentable inventions
Mere discoveries and schemes to perform a mental act, among others, are not legally considered as inventions in South Africa, while inventions whose publication or exploitation would be generally expected to encourage offensive or immoral behavior cannot be granted a patent (Section 25 of the Patents Act). The below points differ from the Japanese system.
A. Computer programs
Computer programs are not deemed to be inventions in South Africa; as such, they cannot be granted a patent. However, a patent may be granted regarding a computer storing a determined computer program in a memory device.
B. Inventions of a method of treatment of the human or animal body by surgery or therapy or of diagnosis practiced on the human or animal body
While inventions related to a method of treatment of the human body are not patentable in Japan, Japanese patent law considers inventions related to a method of treatment of an animal body to be patentable. In South Africa, however, both inventions related to a method of treatment of the human body and inventions related to a method of treatment of an animal body are deemed not to be capable of being used or applied in trade or industry or agriculture, and as such are excluded from the scope of patentable inventions.
However, inventions consisting of a substance or composition used in methods of treatment or diagnosis of the human or animal body are patentable. Further, the fact that the substance or composition forms part of the state of the art immediately before the priority date of the invention shall not prevent a patent being granted for the invention if the use of the substance or composition in any such method does not form part of the state of the art at that date.
C. Variety of animal, plant or biological process
A patent cannot be granted regarding the following: 1) animal or plant varieties, 2) any essentially biological process for the production of animals or plants, not being a microbiological process, 3) the product of such a process.
6. Amendment of specification
The applicant or the patentee may file at any time, following the prescribed procedure, an amendment of the description. However, the contents and effect of this amendment vary depending on the time of filing, for example after grant or during the litigation stage (Section 51 of the Patents Act).
Table 1 Differences between the filing of amendments before grant, after grant and during litigation
||During post-grant litigation
|The applicant can conduct amendments at any time
|The applicant must indicate the contents of the amendment and sufficient reasons to conduct the amendment
|Requests for amendments are filed to the CIPRO
||Requests for amendments are filed to the Court
|“One-way” procedure;oppositions cannot be filed
||Following the filing of the amendment, its contents are disclosed and third parties are allowed to file oppositions. Following the filing of an opposition, the Commissioner issues a decision
||The Court may put on hold the ongoing procedure and transfer the request for amendment to the Commissioner so as to make disclosure and filing of oppositions possible
|The addition of new matter and the addition of matter which was not substantially disclosed in the pre-amendment description is not allowed
|Amendments which cause the post-amendment specification to include claims not appropriately based on matters disclosed in the pre-amendment specification are not allowed
||Amendments which cause the post-amendment specification to include claims not completely contained within the scope of the claims included in the pre-amendment specification are not allowed
7. Application Publication
An application is published for public inspection after 18 months have passed since an earliest priority date (Section 43 of the Patents Act).
In a case where an acceptance of the application is announced within 18 months from the earliest priority date, the application will be published for public inspection after the announcement of the acceptance of the application.
8. Divisional Application
In South Africa, a new application (divisional application) can be filed if a parent application has not been accepted yet (Section 37 of the Patents Act). Note here that, as described above, it is possible to delay the acceptance of the parent application by filing an application for delay.
The divisional application must be related to a part of matters disclosed in the parent application.
9. Revocation of patent
Any person may apply for the revocation of a patent to the Court of Commissioner of Patents. A list of grounds for application for revocation of patent is given in Section 61 of the Patents Act.
When an application for revocation has been filed, the Commissioner sends the application to the patentee and provides the patentee with the opportunity to file a response within a prescribed period of two months. If no response is filed during this two-month period, the patent is revoked. On the other hand, if a response is filed during this two-month period, an examination is conducted to determine whether the patent is to be revoked or not.
Among the grounds for revocation of patent, it is necessary to pay attention to Section 61(1)(g) of the Patents Act.
In a case where the Declaration contains a false statement or representation which the Applicant knew or ought reasonably to have known was false at the time when the statement or representation was made, a patent may be revoked (Section 61(1)(g) of the Patents Act).
The Applicant declares in a Declaration, which is submitted at the time of filing of a patent application, that, as far as the Applicant knows, the patent application does not include any legal basis which makes the patent revoked after the grant of the patent.
Therefore, in a case where, for example, (i) the Applicant entered a patent application into the National Phase in South Africa via the PCT route for which patent application an International Search Report or an International Preliminary Examination Report containing a report(s) saying that the patent application involves no novelty or inventive step had been issued and (ii) the Applicant did not take any measures against such a report before submitting a Declaration, the patent is likely to be revoked because the Applicant is likely to be regarded as making a false statement or representation in the Declaration.
Consequently, in a case where an objection(s) to the application has(have) been raised at the International Phase, it is preferable that the Applicant overcomes such an objection(s) before submission of a Declaration, or extends the due date for submission of the Declaration.
10. Infringement of patent
1) Infringing acts
Making, using, importing and so on a patented invention with no valid justification constitutes an infringement (Section 45 of the Patents Act).
The claims of a patent related to a method or a device to manufacture a product are considered to cover the product manufactured using the claimed method or device (Section 67 of the Patents Act).
In contrast, Japanese patent law considers that the patent right related to a patent granted regarding an invention of a device to manufacture a product does not cover the product manufactured using the device.
2) Relief methods
The patentee can demand (a) an interdict, (b) the delivery of the infringing products, (c) financial damages (Section 65 of the Patents Act).
11. Application Trend
|Number of Patent Applications
1. Design Application
As described above, South Africa is a country of the Union to the Paris Convention. Accordingly, within six months from the filing date of an application for design registration in Japan, the applicant can file a design application in South Africa which claims a priority of the design registration application in Japan.
In South Africa, design registrations are categorized into two types below (Articles 1, 14, and 15 of Design Act).
- (1) Aesthetic Designs
Aesthetic Designs are applied to articles, appeal to the eyes, and are evaluated only by the eyes.
- (2) Functional Designs
Functional Designs are applied to articles and have features necessitated by functions achieved by the articles.
- Functional Designs include a circuit layout of an integrated circuit and a mask work.
The aesthetic design and the functional design differ in registration requirements and duration of registration (Articles 14, 15, and 22 of Design Act).
- The duration of the registration of an aesthetic design is 15 years from either a registration date (= filing date) or a publication date that is earlier.
- The duration of the registration of the functional design is 10 years from either a registration date (= filing date) or a publication date that is earlier.
2. Non-examination Registration
Similarly with a patent, in South Africa, only a formal examination is carried out to a design application without carrying out a substantive examination so as to determine whether the design can be registered (Articles 15 and 16 of Design Act). A design registration that does not meet registration requirements under Design Law will be a target to be cancelled (Article 31 of Design Act).
3. Registration Requirement
A design must have absolute novelty. The design filed is regarded to be novel in a case where the design t filed differs from a design published around the world on the filing date or before the priority date or does not constitute the published design. In a case where the design is published before the filing date, an Applicant has to file a registration application of the design within six months from the publication date in order that the design is regarded as novel.
The aesthetic design has to be original, whereas the functional design has to be not commonplace in the art in a field to which the design pertains.
The design has to be applicable to an article that can be mass-produced during an industrial production process.
1. Trademark Application
As described above, South Africa is a country of the Union to the Paris Convention. Accordingly,, within six months from the filing date of an application for trademark registration in Japan, the applicant can file a trademark application in South Africa which claims a priority of the trademark registration application in Japan. South Africa is not a signatory nation of Protocol Relating to the Madrid Agreement.
Similarly with Japan, an Applicant can widely designate goods and services in South Africa (Article 11 of Design Act). Further, it is possible to register outer shapes of goods (Article 2 of Design Act).
South Africa adopts an examination system for a trademark as different from the patent system and the design system in South Africa. Thus, a substantive examination is carried out to a trademark as to whether the trademark falls under grounds of unregistrability (Article 16 of Design Act).
Under the provision of a collective trademark, geographic indications of origins such as geographic names can be registered as collective trademarks (Article 43 of Design Act).
South Africa has the associated trademark system (Article 30 of Design Act) and the certification trademark system (Article 42 of Design Act).
2. Duration and Renewal of Trademark
The duration of the registration of a trademark is 10 years from a filing date (Article 37 of Design Act). The duration of the trademark can be renewed every 10 years. However, in a case where the registered trademark has not been used for designated goods or services for five or more years, the registration may be cancelled (Article 27 of Design Act).
Companies and Intellectual Property Commission (CIPC):http://www.cipc.co.za/