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By: Stellar Frisby and reviewed by Janusz Luterek

As South Africa is a non-examining country, it is especially important for a patentee to ensure that their patent claims are valid. For this reason, among others which will be discussed below, it is recommended that the claims are amended to be in line with those of an examined counterpart. Amending the application to conform to South African patent law and practice is equally as important and typically includes removing or revising wording that may be prejudicial to the validity of the patent, adding omnibus claims and ensuring the claims adhere to permissible formats.

Pre-Grant vs Post-Grant Amendments

Post-grant amendments, whilst allowable, must adhere to a number of requirements outlined in the South African Patents Act 57 of 1978. These amendments must (i) fall entirely within the scope of the claims prior to the amendment (ii) be published in the Patent Journal and (iii) are open to a stringent two-month, third-party opposition period. On the other hand, amendments filed before grant have the benefit of being wider in scope and can include matter disclosed in the description before the amendment.

Considerations for Expedited Grant

While fast-tracking the application may seem appealing, it may work against the applicant in the long run. Rushing through the application, acceptance and grant processes increases the risk of overlooking claim issues, which may result in potential enforcement issues and costly amendment litigation down the line.

Delaying Amendments

If a patent proceeds to grant and there is a deliberate, intentional delay in amending claims that are invalid and the patentee knew and deliberately maintained the invalid claims in an unamended form, in other words the requirements of a culpable delay are met, a third-party may successfully oppose the amendment, rendering the unamended patent invalid.

Amendments During Litigation

In the case of infringement, relief may be sought based on claims that are valid, even though other claims may be invalid. However, the invalid claims must first be amended before infringement proceedings continue. These amendments will be subject to conditions deemed fit and imposed by the Commissioner of Patents. The amendment must then be published for opposition - all of which incur costs and delay infringement proceedings.

Further, the Court can elect to refuse to allow amendment of the claims or, if amendment is allowed, refuse to award damages for any acts of infringement committed before the amendment was made and may take into account the patentee’s conduct in permitting the claims to remain on the Register invalid.

Omnibus Claims

Although omnibus claims are frequently ignored or simply overlooked, they have the potential to be invaluable tools should litigation arise. Omnibus claims can be classed as narrow or broad. Narrow omnibus claims, for example “A compound as claimed in claim 1, substantially as herein described and illustrated” are limited in scope and refer to matter disclosed in the description, examples, and/or figures as the subject matter of the claim. On the other hand, broad omnibus claims cover variations and embodiments unclaimed at the time of drafting and their inclusion could allow circumvention of the post-grant amendment requirements mentioned above. For instance, a broad omnibus claim such as “A new compound substantially as herein described” could allow the scope of the post-grant amendment to extend to any matter disclosed in the specification, rather than only the scope of the granted claims, and thus for the post grant amendment of the claims to be within the scope of the broadest claim prior to the amendment.

A notable omnibus claim success is the case of Frank & Hirsch (Proprietary) Limited v Rodi & Wienenberger Aktiengesellschaft where a narrow omnibus claim was found to be both valid and infringed.

Objections to omnibus claims have been raised in reports on patentability issued by the Companies and Intellectual Property Commission in terms of the Experiential Learning Programme – perhaps unsurprisingly so as the would-be South African patent examiners are working closely with the European Patent Office. It will be intriguing to observe the unfolding developments once Substantive Search and Examination procedures are implemented.

While the use of omnibus claims seems to be declining in South Africa, this trend does not seem to truly reflect substantive changes but rather perhaps as a result of cautious approaches influenced by legal practices in other jurisdictions.

Taking the time to carefully review and amend South African patent applications may seem tedious or redundant as South Africa is a non-examining country. However, proactively amending applications to conform to South African patent law and practice and aligning the claims to be in line with those of an examined counterpart may reduce the need for amendments should litigation arise and may even increase protection. It’s a simple, smart strategy that has the potential to save applicants a headache in the future.

Article first published in IP Briefs, Volume 2 / Issue 11 / April 2024.