You and your patent – in depth overview.


What does a patent protect?

A patent refers to a new and non-obvious invention, which is suitable to be applied in trade or industry or agriculture. An invention can be a new product, process, device or the like, or an improvement on an existing product, process, device or the like.

Who is protected by a patent?

The applicant for a patent must be the rightful owner of the invention; eg he must be the inventor, the assignee of the inventor or the inventor’s employer if the invention was made in the course and scope of employment.

How does a patent protect you?

A patent is a monopoly right conferred by the State for a limited period of time. Hence most commonly a patent is a national right limited to the nation concerned, but there are a few regional patents, one for Europe, one for “English-speaking” African countries and one for “French-speaking” African countries. A patent for “Europe” now extends to numerous East European and Mediterranean countries as well.

A patent gives you the right to exclude others from making, using, exercising or disposing of your invention, so that you can enjoy the whole profit and advantage accruing from the invention for the duration of the patent.

Are there any exceptions to patent protection?

Certain categories of inventions excluded from patent protection in most countries are the traditional copyright works or any aesthetic creations; a method, scheme or rule of doing business or playing a game; a scientific theory or mathematical method; the presentation of information; a computer program, and methods of medical treatment. Sometimes excluded categories can be indirectly protected by monopolising the technology necessary for them.

How long does a patent protect you?

A provisional application is available in South Africa and a few other countries, including UK and USA, and obtains provisional protection for a period of twelve months in all Paris Convention countries (about 154); this can be followed by a complete application in selected countries (before the expiry of the twelve-month period), which provides protection for generally 20 years from the date of filing the complete application, renewable usually from the 4th year, in each country. However, increasingly South Africans are choosing rather to obtain foreign patent rights by entering the PCT (Patent Co-operation Treaty) system, for which see below.

What will patent protection cost you?

If you file the provisional patent application in South Africa yourself, a R60 revenue stamp will suffice. If the provisional patent is filed by a professional (which is preferable, to avoid subsequent invalidity or complications arising from inadequate description or too narrow a definition of the invention), the fee might be anything between about R5 000 and R7 000 or more, depending on the complexity of the invention.

The complete patent filing in South Africa, which must be done by a patent attorney or patent agent, will cost between R7 000 and R10 000 or more, including official fees. The renewal fee, payable annually from the 3rd year onwards, is on a sliding scale from R130 to R206 for official fees and R725 for a patent attorney’s fee. As in the case of design registration, the patent attorney’s fee will include professional advice, preparation of specification drawings and formal papers and the implementation of a system to remind you and making the payments.

What are the registration requirements for a patent?

You, the inventor, or your patent attorney can apply to the Registrar of Patents at CIPRO for a patent. Application for a patent can be made by way of a provisional application, to obtain provisional protection, followed by a complete application (this must be done by a patent agent or a patent attorney).

Alternatively, a complete patent application may be filed in the first instance. (See address list,at the back of this publication.)

What countries are covered by patent protection?

A South African patent has effect only in the territorial area of South Africa. If you require protection in other countries, you must file separate applications in such countries. An exception is the regional patent for Europe and regional patents in Africa.

Your South African patent application can serve as a basis for claiming so-called convention priority in respect of foreign applications in the majority of other countries. You must file such foreign applications within twelve months of your first South African application.

An important alternative, used increasingly since South Africa joined the PCT in May 1999, is to extend the period of provisional protection from 12 months to 30 months, internationally, by filing a PCT (Patent Co-operation Treaty) patent application. Rights are provisionally reserved in 135 countries and the benefit of an international search and preliminary examination is included. The advantages include deferring the costs of filing in foreign countries, an early reliable and impartial indication of validity (at the 16th –17th month), with opportunity to amend if it is necessary, which can form a basis for confidence by investors. At the end of the PCT procedure the patent application will be in a better condition to go through the examination successfully in each country in which you finally patent.

Tips and comments on patent protection

The term “new” means that the invention or information about the invention should not have been available to the public anywhere in the world. Accordingly, it is of vital importance that your patent application be filed before your invention is made known to members of the public.

You should neither discuss your invention nor show it to anyone who is not legally bound, by contract or by the nature of your relationship with them, to keep it confidential. Disclosure of your design or invention to a professional advisor, eg a patent attorney, is not a premature disclosure because he owes you a legal duty of confidentiality, and what you tell him will be privileged in law.

The filing of a provisional application in the first instance has several advantages, including that it can be filed relatively quickly (since only a provisional specification is required to be filed), and it secures a filing date yet affords a twelve-month period during which the novelty, technical merit and commercial prospects can be further investigated, before the application is completed.

This twelve-month period may be far too short for developing the invention into a product. Hence the value of the PCT procedure mentioned above, which gives 30 months. In addition, it may be advantageous not to file a patent immediately, provided that the novelty of the invention will not be adversely affected by the delay. Limited protection during the product’s development and testing phase can be achieved in other ways, eg a confidentiality or non-disclosure agreement, before a patent application is filed (see Licences, Assignments and other Agreements, page 16).

Once the patent is filed, the clock starts ticking and you have limited time before deciding whether or not to file a complete patent and, if so, in which countries.

If your provisional patent protection time has expired, it may be possible to re-file your application. This, however, carries the disadvantage that you lose your original file date, which can have serious consequences. Do not take this decision lightly and preferably seek professional advice.

In some (rare) instances, it may be better not to patent your discovery or invention but to continue to keep it secret, eg as in the case of the formula for Coca-Cola. This enables you to have monopoly rights well beyond the 20 years of cover granted by the patent! This option is viable only if it will not be possible for outsiders to analyse and determine your invention, or for insiders to reveal it.

The provisional patent application secures the date and a right to the invention but does not guarantee that your claim is legitimate. No search is done by the Registrar of Patents in South Africa to ensure that your idea is unique and there could well be another similar invention, either local or overseas. The onus is entirely on you, the applicant for the patent, to look into this question. This means that patents may be granted in South Africa for inventions that are not new and that may even have been patented. It is worth the additional time and costs to conduct an international search to ensure the uniqueness of your invention even before filing the provisional – also this could save you from re-inventing the wheel. South Africans now have good access via Internet, to international patent databases, see the addresses under the heading “Internet Searching Addresses”.

In most overseas countries, such as the USA and Europe, intensive worldwide patent searches are carried out before a patent is issued, thus ensuring that the invention is truly unique. This is where the PCT procedure is helpful, as it includes the preliminary search, which is good insurance against adverse results later.

Five years after the date of application for your patent in South Africa, any person can obtain details of search results in any foreign patent applications you may have filed. Publication of granted foreign patents usually include details of prior art that was considered before the grant to you.

Searches in the markets where you intend to sell, are necessary if you want to be sure that in manufacturing you do not infringe someone else’s patent. It is quite possible to find that a product is protected in some countries and not in others.

Inventions and supporting literature should all be marked with “patent applied for” or “patent”, with the relevant patent number, to ensure that infringement damages can be recovered. Falsely claiming that patent rights exist is a criminal offence.

Basic procedure for patent registration

Step 1: It is advisable to do a ‘novelty search’ at the search facility at CIPC’s Paper Based Disclosure Centre to make sure that the invention is truly new and will not infringe on someone else’s existing patent rights. It is a manual search. A patent attorney may also be appointed to do this on the applicant’s behalf. It is also advisable to do searches on other countries’ patent websites to ensure as far possible, that the invention is truly new. If no similar invention is found, the applicant can take the next step, which is to register the invention.

Step 2: The applicant can apply for provisional patent rights by completing a set of application forms, which consist of form P1 (dupl.), P2 (dupl.), P3 and P6. The registration fee is R60 plus any professional fees incurred. A detailed, broad description of the invention must be prepared on separate A4 size paper that must be attached to the application forms. Neat drawings in black ink (on A4 paper) may also be included to help with the description of the invention. The wording of the description is very important and the description may not be altered or added to after it has been lodged at CIPRO. The protection of the patent will depend on the wording used in the description.

The provisional patent will be valid for a period of 12 months. In these 12 months, the patent may be manufactured and marketed. Any time during these 12 months, the final patent may be filed when the applicant is confident that the invention is successful.

A private individual or a company may apply for a patent. The inventor/s can only be indicated as natural persons and not a company. If a company is the applicant or if the applicants differ from the inventor/s, an assignment of invention document from the inventor to the applicant must be filed with the application. It is more advantageous to apply in a private capacity – especially if it is planned to file the patent internationally (Patent Cooperation Treaty System (PCT).

A provisional patent may be extended up to three months, but a priority claim in a foreign countrymust be within 12 months The cost for extension is R50 per month. Alternatively, the applicant may apply for post-dating, but the original protection date will be forfeited (the application date is “shifted” on as if the application was filed on a later date). One may post-date up to six months. The cost is R50.

Step 3: The final (complete) patent can be filed in South Africa only or with the PCT international filing system.

The SA Patent Act requires the signature of a registered patent attorney on the specification.

Through the PCT system, an applicant may apply him/herself by doing an international reservation in member countries of PCT. If an applicant applies in a private capacity, the applicant will receive a huge discount on the reservation fee. The reservation fee is roughly ± R6000 (including the discount). Later when it reaches the national phase (where the application is filed in the different countries), fees are paid as set by each country, around R 35 000 average..

After the application has been accepted and granted (advertised in the Patent Journal), the patent needs to be renewed annually from the third year to keep it in force. The renewal may be paid by the owner of the patent him/herself or a patent attorney firm. The renewals may be paid in advance. A patent’s life span is 20 years. The renewal fees work on a gliding scale and may be viewed on the CIPC web site www.cipc.co.za

Courtesy SABS

*All fees and costs are estimates and subject to change without notice.