In South Africa the Intellectual Property Rights are either registered or unregistered. Formal applications for registering IP rights are made via the appropriate government channels while the unregistered rights exist from the creation of IP.

A patent is a tool that grants the owner of the patent an unrestricted, exclusive right over an invention—be it a system, composition, technique, or product—that offers a novel and inventive technical solution to a problem. It prohibits others for a finite amount of time from using the owner's innovation. But in order for others to use the invention after the patent expires, the owner must fully disclose it in the patent specification in order to benefit from this exclusivity.

The definition of patentable inventions is provided in Section 25 of the Patent Act, Act 57 of 1978 ", it states the items that can be patented:

1. Any new invention that combines an inventive step and can be used or applied in trade, industry, or agriculture may be granted a patent, subject to the rules of this section.

2. For the purposes of this Act, the following shall not be considered inventions: Anything that is composed of a discovery, a scientific theory, a mathematical method, a literary/dramatic/ musical/ artistic or any other aesthetic creation, a scheme/rule/method for performing a mental act/ playing a game or doing a business, a program for a computer, or the presentation of information.”

These limitations only apply insofar as the innovation is related to the subject matter in question. There isn't currently any South African case law defining the meaning of these sections. There is a general consensus that South African courts may adopt a European-type approach, requiring a "technical effect" for computer software and business techniques, as established by the European Patent Office's Boards of Appeal.

Patent filing in South Africa

In order to get a patent granted in South Africa, one must accompany the patent application with the complete patent specification. There are several options leading up to the filing of a complete application.

Three general options are available:

(1) file a complete application right away, without filing any prior patent applications;

(2) file a provisional application to set a filing date or "priority" date; and

(3) in case the patent protection is sought in multiple foreign countries the PCT Route is followed, thus allowing the same international application to be nationalized in multiple countries at once.

It is also possible to use combinations of these procedures.

Three categories of patents are recognized by South African law: divisional patents, patents of addition, and conventional patents. Normally, complete national patent applications and conventional patent applications are approved within 12 to 15 months of the application's filing date. After filing the national phase application in South Africa, a PCT national phase patent application is normally granted in 15 to 20 months. An applicant may request a delay in or extension of the acceptance process for their application. This is normally done when an applicant is awaiting the results of a related application's examination in an examining jurisdiction.

For a patent application a complete patent specification or a provisional one may be used to support it. An invention is described in detail in a patent specification, which is frequently supported by illustrations that aid in understanding.

In the event that your invention is in its early stage and additional developments or advancements is probably required, we advise submitting a provisional patent application first. Since the provisional specification will eventually serve as the foundation for the complete specification, it is a crucial document. It ought to be meticulously and professionally written, with as much information as possible. From a legal perspective, a poorly drafted provisional specification could have no use at all.

A fresh patent application accompanied by a detailed specification is required to be filed after a provisional patent specification. This needs to be filed "claim the priority" of the provisional filing date and within 12 months of the provisional specification's filing date. Also, only for South African patent applications a three-month extension of the twelve-month period is possible upon payment of a fee.

A complete specification can be filed "in the first instance" if all of the details of your invention have already been worked out; this means that filing a provisional patent application is not required. As a result, expenses are less than for the temporary or full route. Even though you may be able to file a complete application initially, you may prefer to file a provisional specification initially if you only need temporary protection to test the commercial viability of an invention. This was you are extending your potential patent protection duration. A complete patent now entitles you to a total of 21 years, as opposed to the previous 20 years (plus an additional 3 months in South Africa). Filing also has a lower initial cost. (Note that: starting at the end of the third year, yearly renewal fees must be paid in order to extend a South African patent's 20-year term.)

It is recommended that you file one or more additional provisional applications covering any significant developments or improvements you make after filing a provisional patent application and before the 12-month completion deadline. When you file for a complete patent application you can "cognate"—that is, combine—the various provisional specifications into a single, complete patent application. In South Africa, a patent can be registered and granted in less than two years, measured from the date the complete application was filed.

Following grant, the patent holder may apply for a "patent of addition" to protect further advancements or modifications. It is necessary to consider whether an independent patent is preferable to a patent of addition.

(Note: you only have a right of priority before grant over other patent applicants if filed for the same subject matter.) Until a patent is approved by the Patent Office, you have no legally binding patent rights. It's crucial to avoid giving the impression that you have patent rights in the years leading up to grant. It is not advisable to issue verbal warnings or even letters informing competitors that you have filed a patent application or applications. Serious consequences apply tounjustified threats of infringement.

Requirements for a South Africa Patent Application

Minium filing requirements:

In order to obtain a filing date, one must provide the following necessary details to Companies and IP Commissions:

- Name(s) and address(es) of applicant(s) and inventor(s);

- if priority under the Paris Agreement is to be claimed, the number, date, and country of the priority application;

- Title of an invention (specifications, claims and drawings in any language must be submitted within 14 days from the filing date);

Prescribed fee

While examining patent applications, the South African Patent Office does not look into the subject matter and will grant a patent for any topic, including well-known technologies. It is imperative that you do not submit an application for technology that you are aware has previously been sold or disclosed to the public, regardless of whether it was done so by you or by another inventor and whether it happened in South Africa or any other country. This is due to the fact that patents cannot be applied on technology that is already well known to the general public. You must sign a Declaration attesting to the application's legality when you file a patent. Fraud will be committed if that Declaration is false. Second, anyone in the public can contest a patent's validity at any moment. Here are a few of the most typical attack points:

- that the invention was not new in that, immediately prior to invention's priority date:

- that the invention was included in the first "state of the art"; or

- the invention was detailed in a patent application with an earlier priority date that was later made available for public inspection; or

- that the invention was utilized covertly and commercially in the country (meaning you cannot obtain a patent for an invention you have been selling to the public, although you kept it as a secret).

- Considering the "state of the art," the invention was obvious to an expert in the field.

Patent PCT National Phase

For those wishing to obtain separate (national) patents in more than 140 countries, including South Africa, the Patent Cooperative Treaty (PCT) serves as a temporary pathway. The nations anticipated to be significant for patent protection are listed in a single PCT international application. Typically, the 12-month provisional patent period ends with the filing of this PCT application. You will receive an additional 18 months through the PCT application, for a total of 30 months from your provisional priority date. Subsequently, further distinct patent applications must be submitted to the different nations or areas of interest. The filings that follow into the various countries or regions are referred to as the "national phase," while the initial step is known as the "international phase."

When requesting protection under the PCT national phase, each national patent office has certain requirements for the language to be used in the application and the application procedures.As mentioned earlier, you have to file PCT international applications no later than 12 months from the date your priority patent application was filed (that is, no later than 12 months after your South African provisional patent application was filed).

During the international phase, applicants have the opportunity to make changes to their PCT application in response to an International Search Report and an International Preliminary Report on Patentability, which are given at no additional cost to PCT applications. Applicants can also establish their IP strategy and select PCT countries and regions of interest for long-term patent protection during the 30-month international phase.

As previously mentioned, applicants must file their national applications into each country and/or region of interest to them once the 30-month deadline for entering the PCT national phase has passed (assuming they still intend to keep on seeking protection for their invention).

Cost containment during the international phase (i.e., for the 30-month or two-and-a-half-year term) is a major advantage of the PCT route. Applicants who are natural people, South African citizens, and residents are eligible for a reduction on official costs. Before additional costs are incurred for entering the national phase in each of the different PCT contracting nations, the PCT International Search Report and Preliminary Report on Patentability combined provide a good indication of the invention's potential.

Author : PRACHI MISHRA, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References: -

1. https://iponline.cipc.co.za/Patents/PTInformation.aspx

2. Patent in South Africa- access here

3. Patents in South Africa- General Information – access here

4. EUIPO: AFRICA IP SME HELPDESK – SOUTH AFRICA, access here

5. In brief Patent Prosecution in South Africa- access here

6. Obtaining patent prosecution in South Africa: FAQs- access here