Patent Requirements for South Africa
In simple terms, a South African patent may be granted for an invention that is:
If your invention meets these three requirements, generally, subject to certain exclusions detailed below, a patent may be granted for the invention in terms of South African patent law.
Novelty requirement for Patents
Although novelty can never be determined conclusively, an indication of the novelty of your invention may be found by conducting patent and literature searches. South Africa has a so-called "absolute" novelty requirement, which implies that any disclosure anywhere in the world before the filing date of a South African patent application will destroy the novelty of your invention, thereby forfeiting your patent rights. An inventor may sometimes unwittingly destroy the novelty of his / her own invention by disclosing it prior to filing a patent application. However, certain acts of disclosure may be excused in terms of our patent law. If you saw an invention in another country it will not be possible to obtain patent protection for the invention in terms of the South African Patents Act as you are not the inventor. In addition, in terms of the absolute novelty requirement of our Patents Act, the invention can also no longer be considered "new". Only the actual inventor or a person to whom he / she has assigned the rights to the invention may apply for patent protection. It may, however, still be possible for you to exploit the invention in South Africa, provided it has not been protected by a patent here by the inventor thereof. In such cases you are advised to instruct us to perform an infringement (or so-called freedom to operate) search.
Inventiveness requirement for Patents
Even if your invention is new, there may be other similar inventions that have been disclosed to the public in patent specifications or other literature. All such disclosures are known as "prior art". The test for inventiveness under our patent law is to conjecture whether someone skilled in the field of the invention (called a person "skilled in the art") would consider your invention to be obvious or not - it follows that an invention that is obvious to a person skilled in the art is not considered inventive. This test is by its very nature highly subjective, and therefore the decision to file a South African patent application is often dictated more by business strategy than by considerations of the inventiveness of the invention.
Utility requirement for Patents
Abstract inventions with no application in trade, industry or agriculture cannot be the subject of a patent in terms of South African patent law. However, if an invention has a practical use, such invention will be considered utile, and may thus be protected by way of a patent, if it also meets the novelty and inventiveness requirements set out above.
Inventions which cannot be the subject of a patent in South Africa
Exclusions as inventions in terms of the South African Patents Act: Anything which consists of a discovery; a scientific theory; a mathematical method; a literary; dramatic, musical or artistic work; or any aesthetic creation; a scheme, rule, or method for performing a mental act; playing a game, or doing business; a program for a computer; or the presentation of information, are not considered an invention and can therefore not be patented in terms of the South African Patents Act. In certain circumstances you may still consider filing a South African provisional patent application, even though there may be uncertainty about the definition of the invention. The reason for this is that the above exclusions are interpreted restrictively (i.e. they exclude only the listed inventions as such from being patented). Also, this section of the South African Patents Act has not been subject to litigation in such a degree that clear precedents which can be followed have been set in all the above categories. Further, because of an increasing number of patents being granted in other countries for inventions that are excluded in terms of the South African Patents Act (such as software and business methods), a South African provisional patent application may be used to establish priority rights for the invention that may, within 12 months, be prosecuted in other countries where some of these categories of inventions are patentable (such as in the USA and in Europe).
Other inventions for which a South African patent will not be granted: Inventions that are likely to encourage offensive or immoral behavior cannot be protected by way of a patent. Also, inventions which are frivolous and contrary to the known laws of nature, such as perpetual motion machines, are excluded from patentability. Inventions relating to methods of treatment, therapy or diagnosis to be performed on the human or animal body, as such, are not considered patentable, but compounds or compositions for use in such methods may be patented. In addition a patent cannot be granted for products of biological processes which are not essentially microbiological in nature. For further information in this regard, please refer to our Biotech page.
How to protect your invention by way of a patent
- First and foremost, KEEP THE INVENTION SECRET and do not market, or sell it until a patent application has been filed at the South African Patent Office.
- Contact us to discuss patent or other protection for your invention in detail.
- We can also discuss the possibility of conducting cursory, fixed cost patent searches to provide you with background information of what has been patented before in your field. These searches need not be very expensive in order to provide you with an indication for what has been patented before.
- Should you wish to proceed with the patenting process, we shall, upon receipt of a deposit, prepare a patent specification for the invention.
- The patent specification will, upon completion, be forwarded to you for approval.
- When you are satisfied that the patent specification is complete, we shall file a patent application containing the patent specification at the South African Patent Office in Pretoria.
Only after we have confirmed that the patent application has in fact been filed at the Patent Office may you disclose your invention. Keep in mind that the patenting of your invention is no guarantee of its commercial success. In addition, you may also wish to obtain Design protection, or protect your company- or product name with a registered Trademark.
The patenting process in South Africa
Obtaining a patent is essentially a two-step process, with the two steps being spaced 12 months apart. The first step is to file a South African provisional patent application for your invention. This is done to obtain the earliest possible date from which to claim rights to your invention - much like an option to protect your invention. The second step is to file a complete patent application within 12 months of filing the provisional patent application in South Africa, and/or in each country where you wish to obtain patent protection. The complete patent application or applications will claim a first (or "priority") date from your provisional patent application. In other words, the rights you are protecting date back to the filing date of your South African provisional patent application. During the initial 12 month patent grace period, your rights are kept open.
The advantages of first filing a provisional patent applications
Complete patent applications are more expensive to file than provisional patent applications and it is not possible to add additional matter to a complete patent application once it has been filed. The reason for this two-step approach to patents is therefore to give you time to determine if there is a market for your invention, and also to give you time to refine your invention into its "perfected" form prior to filing a complete patent application. Furthermore, it must be borne in mind that any modifications that you make to the invention as contained in the provisional patent specification must be kept secret until such modifications have been captured in a second provisional patent application or are included in the eventual complete patent application.
Obtaining enforceable patent rights in South Africa
It is important to note that a provisional patent application does not provide you with an enforceable right (i.e. you are not allowed to take steps to stop other people from exploiting your invention based only on the provisional patent application). A provisional patent application is merely a mechanism for protecting your invention while you test its commercial potential. You only obtain an enforceable right once a complete patent application for the final form of your invention has been filed and a South African patent has been granted by the Patent Office. However, should your competitors start copying your invention before a patent has been granted, it is possible to expedite the granting of your patent.
Indication of the patent application number or a granted patent number on an article
In South Africa, if a provisional patent application has been filed, the article may be marked with the words "Provisional Patent application number" followed by the patent application number. If a patent has been granted an article may be marked with the words "Patent number" followed by the patent number. It is not permissible to mark an article as above if a patent application has not been filed, or if a patent has not been granted.
Cost of South African patent applications?
For inventions of low to medium technical complexity, typical costs for preparing and filing a South African provisional patent application are usually in the range of R8 000 to R12 000, depending on the complexity of the invention. The more complex the invention, the more it costs to draft the patent application. However, after consulting with you, we shall be able to provide you with a more accurate cost estimate for preparing and filing the patent application. We shall only proceed once we have received your express instructions to do so and shall take no further actions in this regard should you not wish to obtain patent protection for your invention. Filing of a South African complete patent application is slightly more expensive than filing a South African provisional patent application. However, at the time of filing your complete application, you will have a much better idea of the commercial potential of your invention and whether it is commercially viable to file a complete patent application, or patent applications. Once a patent has been granted, annual renewal fees are payable and a patent will lapse if the renewal fees are not paid timeously.
International patent protection
It is important to note that patents are territorial rights - a patent granted in South Africa can be enforced in South Africa only. However, you may, within 12 months of filing your South African provisional patent application, file foreign patent applications based on your provisional patent application - however, only once each such foreign patent application has proceeded to grant will you have an enforceable patent right in any such countries. This does not mean that you cannot start marketing your invention in such countries - it means that you cannot obtain a patent right if you do not file and prosecute each patent to completion in each of your target markets. Thus, there is no such thing as a "worldwide" patent - you have to file a patent application in each country in which you wish to protect your invention. There are, however, option which allow you to keep your rights open in most foreign countries before finally deciding on such countries - please contact us to discuss such options. Through our network of foreign patent agents we can file foreign patent applications in your countries of interest. Please consult our page on foreign patent protection for more information. As a few countries are not members of certain international patent treaties, we would ask you please to let us know at the time of filing your South African provisional patent application in which countries you are considering applying for patent protection.
The importance of dates in the patent process
Patents are time and date sensitive. You have 12 months in which to file a complete patent application based on your South African provisional patent application. However, should you wish to proceed with the filing of a complete patent application, it is important that you contact us within 10 months or so of filing your provisional patent application in order to give us sufficient time to draft and prepare a complete patent application for your invention - failure to do so will result in a surcharge being levied for urgency. In addition, failure to file a patent application or patent applications within the set deadlines may result in your patent rights being forfeited. A 3 month extension period beyond the 12 month deadline is available in South Africa only for filing a South African complete patent application. This is not available in other countries. You may claim patent priority in a foreign patent application from a South African provisional patent application, but only within 12 months from the date of filing such South African provisional patent application.
The advantages of protecting your invention by means of a patent
Someone else may come up with your idea independently and may beat you to the market. However, if you had filed an earlier patent application, which eventually proceeds to a granted patent, you may stop your competitors from exploiting your invention - your date is the earliest and thus the patent rights accrue to you. Even if a competitor starts exploiting an invention which is covered by your patent, between the date of filing your South African provisional patent application and the date that a patent is eventually granted, you may be able to take action against such competitors once the patent is granted. This means that you do not lose any patent rights in the 12 month period, provided you claim priority from your earlier (provisional) provisional patent application when filing a complete patent application. Also, a patented invention can be used as a business tool to generate income by means of licensing of your invention, or by selling the patent rights in your invention.
Information required by us to proceed with the patent process
If you contact us, we can supply you with an outline which can be used to set out the information described below for patenting purposes.
Details of the invention
We need a full, detailed technical description of the invention in order to draft a patent specification. If you have a prototype or drawings of your invention, this would also suffice, together with a description of the functions it performs and the distinguishing features of your invention. It is of critical importance that we include as much detail in the patent specification as possible, to ensure that all embodiments and features of the invention are protected in the patent application. As you are the expert when it comes to your invention, we will draft the patent specification, forward it to you for approval and comment, and only file the patent application once we have received such approval.
Details of the inventors
In terms of the South African Patents Act, we need the full names and residential address of the inventor or inventors that contributed inventively to the invention.
Details of the Patent applicant / Patentee
Patents can be filed in the name of a person, such as the inventor, or a legal entity, such as a company. As such, we need the full names of the patent applicant, or patent applicants and their residential address(es), or if the patent applicant is a legal entity, we need the name of the entity and its registered address.
Details of our client
In terms of the Financial Intelligence Centre Act, we need to identify who our client is. Therefore, you need to supply us with your full contact details. In this regard, the information needed should comply to the requirements of the Financial Intelligence Centre Act.