South African Patent Q&A

Can a South African patent cover any type of invention, including software, business methods and medical procedures?

• In South Africa, patents are granted for new inventions that are inventive and can be used or applied in trade, industry or agriculture, but certain subject matter is expressly excluded from inventions, such as: discoveries, scientific theories, mathematical methods, literature, drama, music, works of art and other aesthetic creations, mental activities, games or business plans, rules or methods, computer programs and forms of information expression, etc. There is currently no case law in South Africa to interpret the meaning of these provisions.
• Inventions for surgical or therapeutic methods for humans or animals, or for diagnostic methods for humans or animals, are considered unpatentable. However, second medical uses of known substances are patentable if the claims are described in Swiss Type claim format. The law also provides that for inventions consisting of a substance or composition for such a treatment method, if the use of the substance or composition in any such treatment method is new, the substance or composition is not new and does not prevent the granting of a patent for the invention.
• Animal and plant varieties or essentially biological processes for producing them may not be patented, but microbiological processes and their products may be patented.
• Patents cannot be obtained for inventions that clearly violate the laws of nature or encourage offensive or immoral behavior.

Who owns patents for inventions by company employees, independent contractors, multiple inventors, or joint ventures? How is patent ownership formally recorded and transferred?

• An invention patent application can be filed by the inventor or by another person who has obtained the right to apply from the inventor. If the invention is partially transferred, the invention can be filed jointly by the inventor and other persons. If the patent applicant is not the inventor, the applicant must provide proof of ownership in order to be granted a patent. The proof of transfer can be in the form of a transfer deed, employment contract, project contract or other forms prescribed by law.
• Inventions and creations made by employees in the course and scope of their employment with an employer belong to the employer. The South African Patent Act provides that any condition in an employee's employment contract that requires the transfer of an invention made by the employee outside the scope and scope of his or her employment, or restricts the employee's rights in the invention for more than one year after the termination of the contract, will render the contract void.
• Inventions of independent contractors require an express written assignment of rights to the party instructing the contractor to assign any invention rights. Inventions of independent contractors, without a written assignment, belong to the contractor.
• In the absence of any agreement to the contrary, joint inventors may jointly apply for a patent and enjoy equal and undivided shares. Individual joint applicants may not proceed with the application in any way without the consent of the other joint applicants or other applicants, unless legal proceedings are required to prevent the application from being abandoned.
• The transfer of patent rights shall be in written form and recorded in the patent register, but it is not required to be registered when it takes effect between the parties. If the transfer is not recorded, the transfer is only effective between the two parties.
• An application to record an assignment must be filed with the South African Patent Office within six months of the event of recording. If the assignment is not recorded within six months of the effective date of the assignment, a waiver of late registration may be requested.

How long does it usually take to obtain a patent and how much does it usually cost?

• Full patent applications and conventional patent applications in South Africa are usually granted within 12 to 15 months from the date of filing. National phase patent applications are usually granted within 15 to 20 months from the date of filing the national phase application in South Africa. Granting can be deferred upon request of the applicant.
• The cost of filing a patent application is generally around $1,000. Annual patent fees are payable annually starting from the third year after the filing date.

Is there any expedited procedure for patent application?

• In South Africa, it is not possible to request accelerated examination through the Patent Prosecution Highway (PPH) route, but because South African patents do not require substantive examination, they can be granted more quickly. According to current practical experience, it usually takes about 9 months for a South African patent application to obtain a patent certificate.

What must be disclosed or described about the invention in a patent application? Are there any specific guidelines to follow or pitfalls to avoid when deciding what to include in an application?

• The specification of a provisional patent application is required to fairly describe the invention. A full patent application requires that the specification sufficiently describes, identifies, and, if necessary, illustrates or exemplifies the invention and how it may be practiced to enable a person skilled in the art to carry out the invention.
• The claims must be clear, unitary and based on matter disclosed in the specification.
• South Africa is a party to the Budapest Treaty, which applies if an invention relates to a microbiological process or a product thereof. No statement or page limit is required, and multiple dependencies are permitted.

Must inventors disclose prior art to patent examiners?

• Inventors do not have to disclose prior art to the South African Patent Office. However, given the applicant’s obligation to ensure that the patent remains in a permissible form, any invalidity of which the applicant is aware must be corrected by amendment.
• If the declaration (Form P3) contains a material misrepresentation which the patentee knew or reasonably ought to have known was false at the time the declaration was made, it may be grounds for revocation of a South African patent.
• If the applicant is aware of any deficiencies in the description or claims, it is important to correct those deficiencies by amendment before grant, especially if there have been any adverse patentability opinions received in other jurisdictions.

Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• At any time before the grant of the parent case, the applicant may file one or more divisional applications. The content of the divisional application cannot exceed the scope of protection recorded in the parent case.
• A patent of addition can also be filed for any amendment to an already granted patent. A patent of addition must be novel and cannot be declared invalid because it is not inventive beyond the main invention. Unlike a divisional patent application, which is considered a new patent application independent of the parent patent application, a patent of addition cannot be separated from the main invention patent.

Is it possible to appeal an adverse decision of the Patent Office to the courts?

• The South African Patent Office does not conduct substantive examination, therefore, a patent will be granted as long as all formal requirements are met. Decisions made by the Registrar may be appealed or reviewed, but such action is limited to decisions relating to procedural or formal issues.

Does the South African Patent Office provide a mechanism for opposing grants?

• There is no mechanism for opposing the grant of a patent in South Africa. However, anyone can file a request for the revocation of a patent at any time after the patent is granted.

Does the South African Patent Office provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• South African patent law follows the “first to file” principle, so the first applicant to file a patent application will enjoy priority.
• The South African Patent Office does not provide a mechanism for resolving priority disputes.

Does the South African Patent Office provide for procedures for amending, reviewing or revoking a patent? Can the court amend the patent claims during litigation?

• Patents in South Africa can be granted without substantive examination, but active amendments can be made before or after grant.
• Active modification before patent authorization must meet the following conditions:
  • No new content is added or there is no substantial disclosure in the instructions before the modification.
  • The amended claims are based on the contents disclosed in the specification before the amendment.
• Active modification after patent authorization must meet the following conditions:
  • No new content is added or there is no substantial disclosure in the instructions before the modification.
  • The amended claims are based on the contents disclosed in the specification before the amendment.
  • Modifications after authorization cannot exceed the scope of protection of the claims before modification.
• South African law also provides that patents can be actively amended during legal proceedings. If a patent application or patent is under court proceedings, an application to amend the patent application or patent should be filed with the court.
• A petition for patent revocation may be filed against a South African patent.

How is the term of patent protection determined in South Africa?

• The term of an invention patent in South Africa is 20 years from the filing date.