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.
- 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 Registry Office (CIPRO; the “patent office” of South Africa) examines whether or not the formal requirements are met; if the CIPRO then judges that the formal requirements are met, the application is “accepted”. It usually takes about six to nine months from filing to acceptance.
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. 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.
8. 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).