A Comprehensive Guide To Patents In South Africa

What Is A Patent?

Patents are meant to protect ideas, as such the only way to protect an idea is to register a patent in respect of the idea. Patents are there to protect novel ideas. Known ideas can only be protected if presented in a novel shape, in which case a registered design is appropriate.

Patents do not necessarily protect the detailed implementation of the idea, instead, a patent is drawn up to protect the principles underlying the idea so that any implementation of the idea using the protected principles will infringe the patent. Patents do provide protection against slavish copying, but copyright is better in this regard.

Patents do protect the design or shape of an article, but a design registration is better for this kind of protection. A patent does not protect the name of the product, as this is protection for which trade mark registration are used for.

What Are The Requirements For A Patent Registration?

In order to obtain valid patent protection, the invention must be novel and inventive, which means:

  • Novel – means that no knowledge of the invention must have been available to the public anywhere in the world prior to the priority date of this application.
  • Inventive – means that the invention must not be an obvious advance on known technology – a skilled technician should not be able to arrive at the invention through routine experimentation.

Our intellectual property department provides a full range of services relating to registration, acquisition, commercialization and protection of IP rights. If you have any questions or would like a quotation, please get in touch with our team today.

What Do We Require From You To Register Your Patent?

In order to enable us to assist you in preparing and filing a patent application we require a description of the concept or invention that should include, at least, the following:

  • a full description of the invention and its novel features, accompanied by sketches, drawings, diagrams or flow charts of the invention (where appropriate). We can get this from you in writing or by discussing the invention with you in consultation.
  • an indication of the features of the invention that distinguish the invention from existing technology.
  • details of any alternative forms of the invention or of possible modifications thereto that you might want to introduce in future.

We need this information because the working of the invention will have to be described in some detail so that it is clearly understandable to a person skilled in this technology.

The normal procedure of obtaining a patent in South Africa involves first filing a provisional patent application, later to be followed by a complete patent application, which then gives rise to a granted patent. This is the normal procedure but in certain circumstances it is appropriate to file a complete patent application in the first instance.

Our charges for preparing and filing a patent application depend on the complexity of the invention and the time it takes to prepare the specification. A guide in respect of our charges is available on request. We will be in a position to give you a more accurate estimate once we receive details of the invention and the market-readiness of the invention.

The South African Patent Office Uses The Following Procedure:

In order to enable us to assist you in preparing and filing a patent application we require a description of the concept or invention that should include, at least, the following:

  • It is normal procedure to first file a provisional patent application.
  • A provisional patent application will not give rise to the grant of a patent. Before the expiry of a period of 12 months from the filing date of a provisional patent application, a complete application must be filed.
  • The filing of the complete application involves the filing of a new, separate patent application accompanied by a complete specification.
  • A patent will only be granted on a complete patent application.

The mere filing of a patent application gives you no right to sue others for infringement. This only occurs after a patent is granted on a complete patent application. In addition, the mere filing of a patent application does not mean you can stop other persons from implementing your invention. Threats of legal action must therefore be avoided.

Patent Searches:

In the event that information about prior knowledge or technology is required, we can conduct novelty searches locally or abroad. If searches are required, we shall require your separate instructions to conduct such searches.

Possible Invalidity Of The Patent:

If the patent is found to be invalid, any person can apply to have it revoked at any time during the life of the patent. If, for instance, you take action against infringers, they may counterclaim for the revocation of your patent. Therefore, unless you are certain that the patent is valid, it is advisable to investigate and confirm the validity of the patent before threats are made or proceedings are instituted against infringers.

We prepare patent applications on the basis of information placed at our disposal by you, our client, on the assumption that our client’s assurances of the novelty of the invention are correct. Neither the fact that we have undertaken to file this application nor the fact that the Patent Office has allocated a number should be interpreted as an indication or guarantee that the invention will support a valid patent.

Disclosures, Exploitation and Possible Infringements:

Once you file a patent application, you may exploit the invention and disclose the invention to others without fear of invalidating a patent on the invention. But, your exploitation and disclosure of this invention should be limited to details which are described in the specification. If your disclosure of the invention displays developments or improvements to the invention that may have been made subsequently to the filing of the application, you should consider obtaining additional protection (an additional patent application or a registered design) before disclosing any such improvements.

Before the invention is disclosed here or in other countries, certain safeguards, such as non-disclosure agreements, may be necessary. We can assist you in this regard.

In exploiting the invention, you must be sure that you do not infringe the rights of others. You must, for instance, be sure that there is no prior South African patent, registered design or copyright which might be infringed by exploitation of the invention. In order to be sure, you might need to conduct infringement searches. We can assist you in this regard.

If you wish to sell the invention or to license others to use it, we advise you to conclude a written agreement clearly defining the terms of the sale or license. We shall gladly assist you in any such negotiations and in preparation of any agreements.

It is advisable to test and develop the invention in all aspects as soon as possible to ascertain whether or not it has sufficient commercial value to warrant the costs of completing the patent process.

Developments And Improvements:

You might develop and improve the invention during the provisional protection period. If these developments are not fully described in the patent application as filed, it may be necessary to file further patent applications to protect the developments. In completing the patenting process, any separate applications can often be combined in a single complete patent application.

International Protection:

The first patent application directed to an invention automatically gives rise to certain rights internationally:

  • The invention is protected “provisionally” in virtually every country in the world. This means that you have the first option to file a patent application directed to the invention in foreign countries.
  • In essence, each foreign application will be “back dated” to the earliest filing date.
  • You exercise this foreign filing “option” by filing an application for a patent in those countries where protection is required before the expiry of a period of 12 months from the earliest filing date. This international priority period is not extendable.

Patent Co-Operation Treaty (PCT):

With South Africa having acceded to the Patent Co-Operation Treaty (PCT) it is now possible for South African applicants to use the PCT process to file an international patent application in the South African Patent Office (in its capacity as the PCT Receiving Office). This is the closest you can get to a “world patent application”, since the PCT patent application serves as a patent application in each of the PCT member countries. Presently in excess of 200 countries are members of the PCT, including the major industrial countries of the world. The PCT application is prosecuted (researched and examined for validity) in the International PCT Office in Geneva and once accepted in the PCT process, the application can then be extended to as many member countries as you wish, by filing separate applications in those countries. The advantage is that most countries will simply accept the PCT examination, thereby substantially reducing the time and costs involved in prosecuting several country applications separately.

Additional Rights:

  • Registered designs – you may wish to consider the use of a registered design to provide additional protection for unique shapes of products made in accordance with the invention. If you are considering the registration of a design, the design itself should be kept strictly confidential until a design application has been filed or until a decision has been made that design protection is not required.
  • Trade marks – in exploiting the invention, you may be using a distinctive trade mark. Please let us know if we can be of any assistance in protecting and registering your trade marks
  • Copyright – the notes, drawings and documentation associated with this invention and products manufactured according to the invention, may give rise to rights under copyright law. Registration of copyright is only possible for films and videos, but your copyright should be dealt with appropriately in the exploitation of the invention.

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