MEMORANDUM ON PROSECUTING A PCT NATIONAL PHASE APPLICATION IN SOUTH AFRICA
- Commencement of National Phase
In terms of South African Patent Law, commencement of the PCT National Phase must take place before the expiration of 31 months from the earliest priority date irrespective of whether a Chapter II demand was filed. A 3-month extension of this deadline is available upon formal application to the South African Registrar of Patents and is subject to his/her discretionary powers.
- Documentary Requirements
Due within 31 months from the earliest priority date, subject to a once-off 3-month extension of time OR within 6 months of national entry depending on which date is earlier:
- English translation of the PCT application as published, if the application was not published in an official language of the Republic of South Africa.
- English translation of the any Article 19/34 amendments filed during the international phase, if the amendment as filed, is not in an official language of the Republic of South Africa.
REGARDING 2.1 & 2.2 ABOVE:
We are not required to submit a copy of the published PCT application upon national entry. Instead, two paper copies of the publication are submitted to the South African Patent Office at a later stage. Usually, this is either at the time of filing an application to amend the specification, or when the Letters Patent is due to be issued.
Article 19 and/or 34 amendments automatically form part of the South African patent application, provided that the Article 19 amendment does not go beyond the disclosure of the international application as filed and the Article 34 amendment is annexed to the IPRP.
Due within 6 months from the date of national entry, subject to an extension of time as requested:
- Form P3: Power of Attorney as well as a declaration - to be executed by the applicant(s).
- Form P26: Statement on the use of indigenous biological resource, genetic resource, traditional knowledge or use - to be executed by the applicant(s). We believe this to be limited to South African resources, knowledge or use.
- Documentation supporting the applicant’s right to apply for a patent in South Africa.
REGARDING 2.3 & 2.4 ABOVE:
A patent application must be accompanied by executed Forms P3 and P26 as they are case specific.
When executing Form P26, please strikethrough options 3(a), 4(a) and 5 if the invention is NOT based on or derived from South African indigenous biological resources, genetic resources or traditional knowledge.
Alternatively, please strikethrough options 3(b) and/or 4(b) and select 5(a) or 5(b) if the invention IS based on or derived from South African indigenous biological resources, genetic resources or traditional knowledge.
Where the applicant has not made a selection on Form P26, we shall assume that options 3(a), 4(a) and 5 are to be deleted and we shall effect this at our end.
REGARDING 2.5 ABOVE:
In accordance with our patent laws, any person other than the inventor, making or joining in an application for a patent, shall furnish proof of his title or authority to apply for a patent. Examples of proof, are assignment documents, employment contracts, affidavits or IB Forms 306.
Where there are two co-applicants and the employees of each co-applicant have contributed parts of the invention as claimed, a cross assignment by all of the inventors to both co-applicants is required. It is not sufficient that the employees of a co-applicant only assign their invention to that co-applicant because under South African Patent laws each co-applicant owns an undivided share in the invention.
Please do not alter any assignment documents which we have provided for signature or use your own forms without first confirming with us that your forms would be suitable for filing in South Africa.
The date of signature indicated on Forms P3 and P26 must be after the effective date of the documents submitted in support of the applicant’s title or authority to apply for a patent.
- Certified copy of the priority document(s) if the applicant has not complied with Rule 17.1 of the PCT.
- Verified English translation of the priority document(s), if the priority document is not in an official language of the Republic of South Africa and has not complied with Rule 17.1 of the PCT.
Due within 12 months from the date of national entry, subject to an extension of time as requested
- When Form P26 shows that the invention to be patented is based on indigenous biological resource, genetic resource, traditional knowledge or use thereof, the applicant must furnish proof of entitlement to make use of the same by lodging with the South African Patent Office one or more of the following:
- a copy of the permit issued in terms of Chapter 7 of the National Environmental Management: Biodiversity Act, 2004;
- if applicable, proof that prior consent had been obtained as contemplated in section 82(2)(a) or 82(3)(a) of the National Environmental Management: Biodiversity Act, 2004;
- if applicable, proof of a material transfer agreement as contemplated in section 82(2)(b)(i) of the National Environmental Management: Biodiversity Act, 2004;
- if applicable, proof of a benefit-sharing agreement as contemplated in section 82(2)(b) of the National Environmental Management: Biodiversity Act, 2004;
- if applicable, proof of co-ownership of the invention for which protection is claimed;
- any other proof to the satisfaction of the registrar.
IMPORTANT NOTE ON DUE DATES FOR REQUIRED DOCUMENTS:
Documents which do not accompany an application for national entry must be late-lodged with the South African Patent Office under cover of Form P5 by the above-indicated due dates.
Our Patent Office now accepts scanned copies of signed documents for filing on the filing date and after filing and it is therefore no longer necessary to send us original documents. However, as they may be requested by the Registrar of Patents or the Commissioner of Patents, please retain the original documents in your records for the life of the patent plus three years.
In the event that any of the formal documents are signed using an electronic signature, please send us this document including the advanced electronic signature data associated with the signature(s) by email. If we are merely sent a scanned copy of a formal document including an electronic signature, we shall not be able to file this.
Where documents are outstanding 12 months after national entry, a delay of acceptance must be requested to prevent lapsing of the application. The delay is requested alongside a request for an extension of time to submit documents and must be filed before the 12-month deadline is reached.
Failure to adhere to the above can result in the irrevocable lapsing of a patent application.
- Claiming Priority
Our Patents Act states the following regarding priority claims:
“sec 31(1)(iii) in the case of an application claiming priority in terms of paragraph (c) the application in the convention country was lodged not earlier than one year before the convention application and was the first application in any convention country in respect of the relevant invention”
Based on the above, the PCT application must claim priority from the first application filed for an invention for which protection is sought. Form P3 mentioned above, further requires that the applicant(s) declare that "this is a convention application and the earliest application from which priority is claimed is the first application in a convention country in respect of the invention claimed in any of the claims”. A false declaration or misrepresentation is a ground for revocation of the patent once granted.
- South Africa as a Non-examining Country
South Africa does not conduct substantive examination, instead, patent applications are examined for formalities only. An application which meets all formal requirements will proceed to acceptance and subsequent grant. Therefore, it is the responsibility of the patentee to ensure that a patent with invalid claims is not knowingly allowed to remain unamended. For this reason, we recommend amending the South African application to align the scope of its claims with a corresponding examined counterpart.
Claims directed toward a computer programme or a method of treatment of the human or animal body by surgery or therapy or of diagnosis practised on the human or animal body is not patentable in South Africa. These claims must be amended into a permissible claim format.
Novelty and Inventive Step
South Africa’s novelty requirements are very similar to other countries including Europe, Australia, USA and Japan, thus, any amendments made to overcome novelty objections before these examining offices should be incorporated into the South African application by way of amendment.
South Africa’s inventive step requirements differ from some of the above jurisdictions. Therefore, amendments made during the international phase or before examining offices solely to overcome inventive step objections should be considered carefully before being incorporated into the South African application. In some circumstances, it may be preferable not to be limited by the amendments annexed to the IPRP or those filed in other jurisdictions but rather to selectively amend the South African application.
- Voluntary Amendments
Amendments are filed on a voluntary basis and may be filed at any time during the life of a patent. However, there are key differences between the restrictions placed upon amendments filed before and after grant of a patent.
A pre-grant amendment may not introduce new matter or matter not in substance disclosed in the specification before the amendment. Also, amended claims must be fairly based on matter disclosed in the specification before the amendment.
In addition to the requirements set out for pre-grant amendments, post-grant amendments must fall within the scope of a claim as it stood at the time of grant. Post-grant amendments must be published for a 2-month opposition period.
- To align the South African National Phase Patent Application with an examined
Based on the restrictions set out above, we recommend filing alignment amendments before grant. As examination can be a lengthy process, you may consider filing a formal application to delay acceptance of the South African application to allow for more time to file amendments before grant.
- To conform the South African National Phase Patent Application with South African patent
law and practice
Conformity amendments include: -
- adding omnibus claims;
- addressing claims directed toward non-patentable matter as set out in paragraph (5) above; and
- addressing any wording that may be prejudicial to the validity of the patent, once granted.
Conformity amendments must be filed before grant. Consequently, we endeavour to prepare and file conformity amendments within 2 months of national entry. However, if you intend to file alignment amendments, as set out in paragraph 6 (a) above, we are able to postpone the conformity amendment until such time that a suitable examination report is available. Thereafter, both conformity and alignment amendments will be effected in one application which can be cost- effective.
- To align the South African National Phase Patent Application with an examined counterpart
- Divisional Applications
Kindly note that a divisional patent application may be filed any time before acceptance of the parent application.
- Delay of Acceptance
A request to delay acceptance ensures that an application is not accepted for a specified period of time. The first delay of acceptance requested for an application is effective from the date of national entry onward. Further requests to delay acceptance are possible and are effective from the end of a previous delay, onward.
Whilst it is our standard practice to request delays for periods of 12 months at a time, an applicant is entitled to the first 15 months. A delay request exceeding 15 months is also possible on good cause shown. For example, the applicant awaits the outcome of prosecution in other examining counties with the view of amending the South African counterpart to align therewith.
Due to the unpredictable time period in which acceptance is issued by the South African Patent Office, it is now our standard practice to request a 12-month delay of acceptance at national entry, should we not receive instructions to the contrary.
Failure to name all inventors in an application can be a cause for the revocation of a patent.
- Microbiological Deposit
If an application claims as an invention a microbiological process or a product thereof and requires for the performance of the invention the use of a micro-organism which is not available to the public on the date of lodging the application and which cannot be made or obtained on the basis of the description in the specification, the following provisions shall apply: -
- not later than the date of lodging the application, a culture of the micro-organism shall be deposited with a depositary institution which has acquired the status of international depositary authority as provided for in the Budapest Treaty;
- the specification shall state the name, or a recognised abbreviation, of the international depositary authority with which the culture was deposited and the accession number given to the deposit by the international depositary authority; and
- the specification, as lodged, shall give such relevant information as is available to the applicant on the characteristics of the micro-organism.
- Renewal/Annuity Fees:
Annuity fees are payable within 36 months from the international filing date. If, however, the patent is issued after 33 months from the international filing date, annuity fees then become payable within 6 months of issuance.