Foreign Patents in South Africa

Foreign Patents: I want to register a worldwide patent - how do I proceed?

At present, there is no single worldwide patent. A patent granted only in South Africa by the South African Patent Office cannot be enforced in any country other than South Africa, unless you have filed patent applications in each country in which you wish to obtain patent protection. Importantly, one must proceed to prosecute each patent application to grant in each country where you wish to have an enforceable patent right, which can take several years. As with South African patents, you have no enforceable patent rights until such time as your patent has been granted by the Patent Office of the country of interest.

How does my South African provisional patent application benefit me then?

Because South Africa is member to the Paris Convention (which regulates international patent rights), you are extended the same patent rights in each member country as you would have in your own country. The Paris Convention allows you to claim the date of filing of your South African provisional patent application as a first (or "priority") patent date for each subsequent patent application filed in a member country within 12 months of the priority patent date. This means that a patentee may file a South African provisional patent application, test the waters for your product in each country in which they intend obtaining patent protection, and then file patent applications at the Patent Offices of each such country within 12 months of filing their South African provisional patent application. However, as stated above, if you do not prosecute each foreign patent application to granted patent status and thereafter keep such patents in force, then you will have no enforceable patent rights in such countries.

Can I extend any of the patent deadlines for filing at foreign Patent Offices?

No. None of the patent deadlines can be extended for foreign patents. Patents are date-sensitive, and a patentee forfeits their patent rights if they miss any of the patent deadlines. Foreign Patent Offices each have their own internal patent deadlines, and you will be guided by your patent attorney in this regard.

What happens to my patent application if I miss a patent deadline?

Your patent rights will most likely be lost if you miss a patent deadline. Therefore, patentees must keep their patent attorney informed of their intention to complete their patent application, as well as provide the patent attorney wwtih a list of countries in which they wish to file patent applications. Please contact us within 10 months from the date of filing of your provisional patent application to allow us sufficient time in which to draft the complete patent specification and to prepare the patent documentation and patent translations required for the Patent Offices of each such country.

I intend filing for patent protection in several foreign countries and I need more time - what can I do?

South Africa, together with 125 other countries, is part of the Patent Co-operation Treaty (PCT), which is administered by WIPO, the World Intellectual Property Organization. As the list of countries is extended periodically, please contact us when required so that we may forward to you a copy of such Patent Co-operation Treaty member countries. As with any other foreign application, a PCT patent application also must be filed within 12 months of the filing date of the South African provisional patent application. Citizens of member states are then given an additional 18 months from the date of filing such PCT patent application before each foreign country is entered. For more patent information or details of the patenting process or PCT member countries, feel free to visit the World Intellectual Property Organization (WIPO) website at: http://www.wipo.org.

Apart from delaying the final patent foreign filing dates, are there any other benefits to filing a PCT patent application?

Yes - PCT patent applications are examined at the World Intellectual Property Organization (WIPO) in order to determine whether your invention is in fact new, inventive and useful, and therefore worthy of a patent. The patent examiners are skilled in the field of each invention, usually having advanced degrees in the field of each patent technology. The patent examiners conduct extensive patent novelty searches through patent and scientific literature databases following which they will issue you with a patent search report. From such patent search reports you can get an indication of whether your invention is considered patentable, before you incur the expense of filing patent applications at the Patent Offices of each foreign country you wish to extend your patent rights to.

Do I still need to pay a patent filing fee to file patent applications at the Patent Offices of each country after having filed a PCT patent application?

Yes - however, this cost is deferred by up to 18 months, allowing you to carefully identify target markets and to raise funding for the rest of the patenting process. Advantageously, patentees are also issued with a patent examination report detailing the patentability of their invention, which will allow them to make an informed decision as to whether or not you wish to proceed with obtaining patent protection.

My invention has received a negative PCT patent report and I do not want to continue with the patent - now what?

Should you not wish to proceed with obtaining patent protection for your invention, inform us immediately. You may save unnecessary patent expenses by withdrawing your patent application as soon as you have decided with final effect not to proceed with the patent process. Please note that you will irrevocably lose all patent rights to your invention should you elect to withdraw your patent application after it has been made public by yourself or after publication by WIPO (which usually occurs 18 months after filing the provisional patent application).

Paris Convention Member Countries

Most countries are members of the Paris Convention. Notable exceptions include India and Taiwan. For these countries, so-called non-Convention patent applications need to be filed at the same time as filing your South African PROVISIONAL patent application, as patentees cannot rely on the 12 month patent grace period when filing at the Patent Office of these countries.

Whom may I contact regarding foreign patent protection?

Smit & Van Wyk file patent applications globally. In addition, we have experience in filing patent applications relating to most fields of technology (see our Home page, our Patents page, our Biotech page and our Software page). Please feel free to contact us to discuss obtaining patent protection for your inventions in foreign countries.

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