International Patents

Patents granted in South Africa only give protection to the patentee in South Africa. Once a provisional patent has been granted by CIPRO the patentee can take one of two steps. He or she can either file for a final patent in this country or with the PCT (Patent Co-operation Treaty) international filing system. If you want the protection of an international patent then it is important to file through the PCT system. This can either be done through a patent attorney or the applicant may apply himself by carrying out an international reservation with member countries of the PCT. This is quite expensive but the applicant will receive a large discount on the reservation fee if he or she applies him/herself. In this case the reservation fee would be approximately R6000 including the discount. Application through PCT gives you the right to seek protection in the 135 countries that are signatories of the treaty. However, if you want protection for your invention in countries other than those that are signatories of the PCT then it is necessary to file directly with each of those countries, which can be quite a costly business.

A few months after making the single filing of a international application with the Receiving Office (RO) in one language will result in a search performed by an International Searching Authority (ISA), and a search report will be sent to you accompanied with a written opinion regarding the patentability of the invention which is the subject of the application. This should give you some idea as to whether it is worth proceeding with the application. It is important to be aware that the PCT does not grant International Patents – there is no such thing. PCT can be considered to be similar to a clearing house for applications. Eighteen months after filing with the PCT the applicant must file for complete patents in each of the countries in which he or she requires protection. Applications have to be translated into the languages of each country and fees have to be paid in each country. These can add up to a huge amount, so the applicant should be sure that his patent will yield sufficient financial returns to make this a profitable exercise. Even if a patent were to be granted in any other country, a third party could still challenge its validity.

It should be noted that the granting of a patent does not necessarily mean that the invention will be a commercial success. A number of patents fail to produce sufficient income to justify the expense of the patent application. It is important not to make any details of your invention public before you file for a patent. It goes without saying that patent attorneys and their helpers are bound by attorney-client privilege and are not permitted to either disclose or exploit your invention. Your application with CIPRO will not be open to public inspection and will remain secret, and the same applies to your application for International Patents.