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International Patent Applications

South Africa is a member of the Paris Convention and has been a member of the PCT since 16 March 1999. The deadline for filing PCT national phase applications in South Africa is 31 months from the earliest priority date.

The Registrar of Patents has a discretion to extend the national phase entry deadline by three months, on formal request made to him by the applicant.

South Africa is a member of the Paris Convention, and has been a member of the PCT since 16 March 1999.

The deadline for filing PCT national phase applications in this country, is 31 months from the earliest priority date.

The Registrar has a discretion, on formal request made to him by the applicant, to extend the national phase deadline by three months.

Convention Applications

In the case of a Convention application, we shall require the full priority particulars, which would include the priority date, priority country, and a listing of the priority applications.

Amendment of Patent Specifications

The description, claims and drawings can be amended/corrected at any time while the application is pending, provided that no new matter is thereby introduced.

Any request for amendment, or for correction of a non-clerical error, has to include full reasons.

Examination

The South African patenting procedure does not include a search by the South African Patent Office authorities, nor substantive examination of the patent specification, nor opposition proceedings. Accordingly, if the formal (e.g. documentary) requirements are satisfied, a patent will be granted on the application.

However, at any time during the life of a patent, a third party can apply to the Commissioner of Patents for revocation of the patent on a number of prescribed grounds which include lack of novelty and obviousness.

Generally a South African application is formally accepted within about six to nine months of filing, provided the formal requirements have been satisfied.

A patent issues within two or three months thereafter, and then the scope of allowable amendments is restricted.

Term of Patents

The term of a patent for non-PCT applications is 20 years from the South African filing date, and for PCT national phase applications is 20 years from the filing date of the PCT International application.

Renewal fees

No maintenance fees are payable on pending applications. Renewal fees become payable once the patent is granted.

Nevertheless, the Registrar will accept renewal fees before the due date, and even while the application is pending.

The general rule is that the first renewal fee falls due on the first anniversary of the filing date, and subsequent renewal fees are payable annually thereafter.

For patents granted on non-PCT applications, if the date of grant of the patent is after the third anniversary of the ZA filing date, then the first renewal fee falls due on the date of grant.

For patents granted on PCT national phase applications, the third anniversary is counted from the filing date of the PCT international application, and if the date of grant is less than three months before the third anniversary, then the first renewal fee falls due six months from the date of grant of the patent.

Documentary Requirements (Convention Applications)

The following have to be filed in support of a South African (ZA) application:

1. Prescribed forms signed by the applicant or by his patent attorney representative in South Africa.
2. A prescribed declaration on Patents Form P.3, which has to be signed by the applicant or, if the applicant is a corporation, by an authorised official of the applicant. The full names and capacity of the signatory have to be furnished. Proof of authorisation of the signatory by the corporation, is not required. The extendible deadline for filing the Form P.3 is six months from the ZA application filing date.
3. A declaration on Patents Form 26 (in respect of the use of indigenous material and traditional knowledge) executed by the applicant or, if the applicant is a corporation, by an authorised official of the corporation. Proof of authorisation of the signatory is not required. The extendible deadline for filing the Form P26, is six months from the ZA filing date.
4. Documentary proof of the transfer of rights from the inventor to the applicant for those cases where the applicant is not the inventor. The documentary proof can be a copy of an existing deed of transfer of rights which at least implicitly includes South Africa, provided the copy is certified by a notary public or the like, to be a true copy of the original, or is a certified copy issued by the Patent Office of another country (e.g. the USPTO). The proof of transfer of rights has to be filed within eighteen months from the ZA date of filing the application, or within three months of an Official Action calling for this document.
   
5. A patent specification and claims (two copies for filing and one copy for our file) for filing together with the application. The South African patenting language is English. However, the patent specification accompanying a South African application can be in a language of any member country of the Paris Convention. If the specification is not in English, a verified English translation has to be filed within three months of the ZA filing date. This is a nonextendible deadline.
6. Drawings for filing together with the application. Formal drawings on A4 size sheets have to be filed, in duplicate, within eighteen months of the ZA filing date, or within three months of an Official Action calling for the formal drawings.
   
7. An Abstract which should not exceed 150 words, has to be filed within eighteen months of the ZA filing date.
   
8. A certified copy of the priority application if the ZA application is to claim Convention priority and, if applicable, a verified English translation of the priority document. Priority documents issued by the USPTO on disk in electronic format are acceptable to the South African Registrar, provided they are accompanied by a hard copy print out of the contents of the disk, and provided the hard copy is certified as a true copy by an attorney. The extendible deadline for filing the priority document is six months from the ZA filing date.
   
9. If the South African application is claiming priority under the benefits of the Paris Convention, and if the applicant in the Convention country is not the same as the applicant of the South African application, documentary proof has to be furnished, of the transfer of priority rights from the applicant of the priority application to the applicant of the ZA application.

Originals of signed documents have to be filed. The Registrar does not accept, for example, ordinary photocopies or faxed copies of signed documents.

Accordingly, such documents have to be sent to us by mail or courier. Neither legalisation nor notarisation of documents is required.