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PARIS CONVENTION AND NON-CONVENTION PATENT APPLICATIONS

 

The Paris Convention period for claiming priority from a foreign patent application to be extended to South Africa is 12 months from the filing date of the foreign application.  South Africa is not a member of ARIPO.

Costs:
  • Filing specification, claiming priority and reporting: USD 780.
  • Voluntary amendment of specification prior to filing (average charge): USD 350.
  • Delay of acceptance (excludes official fee): USD 300.
  • Subsequent receipt and filing of outstanding documents, per batch: USD 220.
  • Acceptance and Publication (Grant of Patent): USD 350.
  • Obtaining Letters Patent and Forwarding to Patentee: USD 350.

What we need from you to file a Paris Convention patent application in South Africa:
  • Priority details (country, application number and date)
  • Full names of all inventors
  • Full name and physical address of applicant
  • International Patent Classification
  • Title
  • English specification in Word format, drawings

We prefer to submit the English specification when we file the application.  In urgent cases where no translation is available, we can submit the English specification up to two weeks after the South African filing date.

Documentary Requirements:
  1. Assignment of Invention (if applicable)
  2. Declaration & Power of Attorney (Patents Form P3)
  3. Statement on the use of Indigenous Biological Resource, Genetic Resource, Traditional Knowledge or Use (Patents Form P26)
  4. Priority document and verified translation thereof into English (if applicable)


Although we can submit scanned copies of the documents listed under 1. to 4. above when filing the application, we require the original documents for our file as the Registrar of Patent may at any time call for the original documents to be submitted.  After filing, we can only submit original documents.  Notarisation or legalisation of signed documents is NOT required.

A Declaration & Power of Attorney (Patents Form P3) as well as a Patents Form P26 (Statement on the use of Indigenous Biological Resource, Genetic Resource, Traditional Knowledge or Use) must be filed for each application.  As the Declaration & Power of Attorney is case specific, it is not possible to file a General Power of Attorney for patents in South Africa.

The Assignment of Invention, Form P3, Form P26 and priority document can be filed within six months of the South African filing date.  Extensions of this deadline are available upon application.

General Prosecution Information:

We routinely amend Paris Convention and non-Convention patent applications before filing.  In the event that you do not wish us to carry out such an amendment, please inform us accordingly when sending us your filing instructions. When carrying out the amendment, we amend or delete wording that may form the basis for an application for revocation, we add omnibus claims and generally bring the application into conformation with South African patent practice.

Patent applications only undergo formal examination for compliance with all the prescribed requirements.  The South African Patent Office however intends to become an examining office.  It is at this stage not possible to say when this will come into effect.

South African patent law does not make allowance for pre-grant opposition proceedings.  It has been proposed that opposition proceedings be introduced but this has not yet come into effect.

Once all formal filing requirements have been complied with, a Notice of Acceptance is issued and we arrange for publication of the abstract of the application in the South African Patent Journal.  The patent is deemed to have been granted on the date of publication.

Amendment of the application prior to grant:

In South Africa, the patentee bears the responsibility of ensuring that his or her patent is valid, once granted.  If the family members of the South African patent application have been filed in examining jurisdictions, we highly recommend amending the claims of the South African patent application to be in line with an examined set of foreign claims.

It is advisable that such an amendment be filed before acceptance of the South African patent application.  As examination in foreign jurisdictions typically takes several years, we can file an application to delay acceptance of the South African case to allow for pre-grant amendments to be made.

The scope of allowable amendments filed before grant is wider than that of amendments filed after grant.  In addition, post-grant amendments are open to opposition by third parties whereas pre-grant amendments are not.  One possible ground for opposing a post-grant amendment is that there was an undue delay in filing the application for amendment.  This could be the case where a co-pending family member in a foreign jurisdiction has been granted but the application for amendment of the South African patent application was filed long thereafter.

Lapsing of the application:

A South African patent application will lapse 18 months from the South African filing date if all formal filing requirements have not been complied with at that date.  We therefore automatically delay acceptance of all South African patent applications by a further six months should all formal filing requirements not have been met immediately prior to the 18-month deadline.

Renewal fees:

Renewal fees are payable annually after the third anniversary of the South African filing date or the date of grant of the patent, whichever is the latter, until expiration of the patent 20 years from the South Africa filing date.  Renewal fees can be paid up to six months after the renewal due date upon payment of the applicable fine.

It is not necessary to pay renewal fees for pending applications, but some clients prefer to do so.