MEMORANDUM
ON PROSECUTING A PCT NATIONAL PHASE APPLICATION IN SOUTH AFRICA
(REVISED MAY 2006 - PATENT REGULATIONS AMENDED)
Documentary
Requirements
1. In terms of Section 43E of the South African Patents Act, commencement
of the PCT National Phase must take place before the expiration
of 31 months from the priority date regardless whether a Chapter
II demand was filed as long as South Africa is elected. The applicant
in respect of an international application designating or electing
the Republic shall-
(a)
pay the prescribed national fee to the patent office; and
(b)
if the international application has not been lodged or published
in terms of the Patent Cooperation Treaty in English, lodge
at the patent office within the prescribed period (viz. 31
months from the priority date) a translation of the
international application, containing the prescribed contents,
in an official language of the Republic. (English is an official
language)
A
maximum three month extension is possible for the lodging of the
translation and if the applicant does not provide the verified
translation of the application within 3 months of entering
the national phase the international application concerned shall
be deemed to have been abandoned.
The
Patent Office may accept late lodging of the translation after
the three month extension period but we believe this to be irregular
thereby making the patent vulnerable to attack in the Court of
the Commissioner of Patent once the patent granted.
2.
The Registrar also requires satisfactory evidence that the applicant
is entitled to apply for the South African patent, and to this
end the standard Assignment is acceptable, although other means
of satisfying the Registrar, such as excerpts from employment
contracts and Affidavits by employers are also acceptable. This
document may be filed within 6 months of the filing date.
3.
A Power of Attorney, on South African Patents Form P3 (the standard
Declaration and Power of Attorney), is also required to be lodged
within 6 months of the filing date although extensions
of this period are available.
4.
A Statement on the Use of Indigenous Biological Resource, Genetic
Resource, Traditional Knowledge or Use on South African Patents
Form P26 is also required to be lodged within 6 months of the
filing date although extensions of this period are available.
We believe this to be limited to South African resources, knowledge
or use. Please note that this Form P26 is required regardless
of the field of technology which the invention relates to and
the relevant blocks being marked on the Form P26 will serve to
indicate the relevance thereof.
5.
Where the Form P26 contains a statement that the invention for
which protection is claimed is based on or derived from an indigenous
biological resource, a genetic resource, or traditional knowledge
or use, the applicant shall, before acceptance of the application
furnish the registrar with proof of his or her title or authority
to make use of the indigenous biological resource, the genetic
resource, or the traditional knowledge or use, by lodging with
the registrar one or more of the following:
(a)
a copy of the permit issued in terms of Chapter 7 of the National
Environmental Management: Biodiversity Act, 2004;
(b)
if applicable, proof that prior consent had been obtained as
contemplated in section 82(2)(a) or 82(3)(a) of the National
Environmental Management: Biodiversity Act, 2004;
(c)
if applicable, proof of a material transfer agreement as contemplated
in section 82(2)(b)(i) of the National Environmental Management:
Biodiversity Act, 2004;
(d)
if applicable, proof of a benefit-sharing agreement as contemplated
in section 82(2)(b) of the National Environmental Management:
Biodiversity Act, 2004;
(e)
if applicable, proof of co-ownership of the invention for which
protection is claimed;
(f)
any other proof to the satisfaction of the registrar.
Specification
Requirements
6.
The South African Patent Office will obtain a copy of the International
Application, with Article 19 and Article 34 amendments directly
from WIPO and copies of the specification, claims, drawings, and
abstract are not receivable from the applicant.
7.
Where either or both Article 19 and Article 34 amendments have
been made during the International Phase, then such amendments
will automatically form part of the South African application,
however where said amendments were not made in English
then a verified translation thereof into English must be provided
within 3 months.
8.
South Africa is a non-examining country and thus the only examination
is to form and not as to substance. It is the duty of the applicant
to ensure that the application is valid as to novelty and inventive
step.
8.1South
Africa's novelty requirements are very similar to those of most
of the developed world including Europe, Australia, USA and
Japan, and thus any amendments made to overcome novelty objections
before these examining offices should be incorporated into the
South African application, preferably prior to grant of the
patent.
8.2
South Africa's inventive step requirements differ from some
of the above jurisdictions and thus a South African application
should be scrutinised in the light of the International Search
Report and/or the International Preliminary Examination Report
to decide to what extent the PCT International Specification
as filed and/or as published should be amended when filing a
South African application to reduce the risk of invalidity on
the grounds of lack of inventive step of any South African patent
which may be granted on the application.
8.3
We usually recommend that amendments made before examining offices
solely to overcome inventive step objections are considered
carefully before being incorporated in the South African application.
This course of action prevents the unnecessary limitation of
the scope of the claims of the South African patent. Only a
court can decide on the question of inventive step.
8.4
It may thus in some instances be preferable not to be limited
by the amendments annexed to the International Preliminary Examination
Report but rather to selectivley amend the South African patent
application prior to acceptance of the patent. This can be undertaken
at the same time as the omnibus claims are added (see 9. below)
by amending the application to reverse the amendments made during
the International Phase, where possible.
8.5
In terms of South African patent practice, omnibus claims are
usually included in a South African application prior to grant
of the patent. These omnibus claims must be introduced by way
of amendment as set out in 9. below.
9
Amendments
9.1
Omnibus claims, claims not allowable in South Africa, such as
method of treatment claims, and any other claims usually added
according to South African practice, and which are not annexed
to the International Application, must be added, deleted, or corrected
after filing but prior to grant of the patent application (about
8 months);
9.2
Unless we hear from you to the contrary within 3 months
from the date of entry into the National Phase in South Africa,
we will formally apply for amendment of the application to bring
it into conformance with South African patent practice and legal
requirements, as set out in 8.1 above. At the same time we can
also attend to any other amendments and corrections, for example,
in the light of prior art which has become known to the applicant
as explained in 8. above.
10.
Priority Document.
a.
If the applicant complies with rule 17.1 of the PCT then neither
the priority document nor a translation thereof need be lodged.
b.
If the applicant does not comply with rule 17.1 of the PCT then
a priority document, together with a verified translation thereof,
must be lodged with the Patent Office within 6 months of entering
the South African National phase. This time limit may be extended
at the discretion of the Registrar on application for extension
being made.
11.
Renewal fees are payable from 36 months after the International
Filing date, but may be paid within 6 months of the grant
of a patent if a patent is granted more than 33 months after the
International Filing
