Patent Prosecution

The South African patents system is governed by the Patents Act no 57 of 1978 which affords protection to patents for inventions (including patents of addition).  The absence of novelty vitiates a patent absolutely in South Africa and protection is refused.  Unless a complete specification is filed in the first instance a priority date is established by an application accompanied by a provisional specification.  Applicants deciding to pursue protection thereafter must file a fresh application accompanied by a complete specification within twelve months of the date of filing of the provisional application claiming priority from that date.

The patent term is twenty years from the date of filing of the complete specification.  A patent must be renewed every third year after the date of application for a patent and annually thereafter. Failing which the patent will lapse and in order to restore it, an application for restoration must be made to the Registrar.  Should the Registrar be satisfied that the omission to pay the renewal fee was unintentional and no undue delay has occurred in making the application for restoration.  He must advertise the application in the Patent Journal.  Any time within two months from the date of advertisement interested persons may lodge their objection. In the absence of opposition the Registrar may issue an order restoring the application.

RW has a professional team that assist our clients in their patents disputes, drafting, filling, patent litigation, patent infringements, licensing and renewals.

Patent Infringement and Validity of Granted Patents

In an infringement matter in South Africa a patentee must show that an infringing device, system, apparatus, or method includes all of the essential integers of at least one independent claim of a patent. In defence, an alleged infringer can deny infringement or rely on invalidity of the patent on any one of the grounds set out in Section 61 of the Patents Act 57 of 1978 and/or on use prior to the priority date of the patent in question i.e. the so called “Gillette Defence”.

Furthermore, an infringer can counterclaim that the patent in question is invalid and request the Commissioner of Patents to revoke a granted patent. The patentee may, where there is subject matter in the patent which could form the basis for a valid patent, apply to the Commissioner for leave to amend the patent which, if granted, will result in the scope of the patent being reduced but the amended patent being valid. This may or may not get the infringer off the hook as the amended patent may still be infringed.

An infringement case is heard by the Court of the Commissioner of Patents, a division of the High Court, and may be brought either by way of Summons where damages are sought or by way of Motion where only an interdict, whether urgent, interim, or final, is sought. An action brought by way of Summons may take 6 to 18 months before it is heard by the court whereas an Application may take 3 to 6 months to be heard.

Validity

In order to be valid, the claims of a South African Patent must be novel and inventive and all formal requirements ought to have been complied with. The novelty requirement is an absolute requirement i.e. an invention as claimed should be new anywhere in the world, not just in South Africa. The South African Patent Office is a non-examining office and all patent applications which meet the formal requirements are granted. It is not normal practice for Patent Attorneys to conduct patent searches for clients unless specifically instructed to do so as the costs of the searches would often exceed the costs of preparing and filing the patent several fold.

Furthermore, the South African Patent Office records are in a complete disarray and it is not possible to conduct a reliable search for South African Patents at the South African Patent Office. Yet further, international databases which may be searched cover only the major countries of the world and have only scant information on South Africa, especially data prior to 1994. Thus, even an extensive international patent search does not have a guaranteed accuracy and it is internationally accepted that, despite the high costs thereof, database searches have an accuracy of around 60%.

The validity of a granted patent may only be challenged by way of an Application for Revocation before the Court of the Commissioner of Patents.