The Paris Convention period for claiming priority from a foreign design application to be extended to South Africa is 6 months from the filing date of the foreign application. It is also possible to file a South African design application within 6 months from the date on which the design was first made available to the public (its “release date”) with the consent of the applicant.
South African law does not make provision for the filing of utility patents. It does however provide for filing a design application in the aesthetic or functional part (or both) of the South African designs register.
An aesthetic design means any design applied to any article, whether for the pattern or the shape or the configuration or the ornamentation thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which appeal to and are judged solely by the eye, irrespective of the aesthetic quality thereof.
A functional design means any design applied to any article, whether for the pattern or the shape or the configuration thereof, or for any two or more of those purposes, and by whatever means it is applied, having features which are necessitated by the function which the article to which the design is applied, is to perform, and includes an integrated circuit topography, a mask work and a series of mask works.
The costs of filing one design application in South Africa in one class and one part of the designs register are as follows:
Although we prefer to submit the drawings of the design on filing, in urgent cases it is possible to obtain a filing date based only on the priority details, the full name and physical address of the applicant and the Locarno Classification.
If not submitted on the filing date, the drawings must be submitted within 14 days of the South African filing date of the design application.
Although we can submit scanned copies of the documents listed under 1. to 3. above when filing the design application in South Africa, we require the original documents for our file as the Registrar of Designs 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.
The documents listed above can all be file within six months of the South African filing date. This deadline can be extended upon application made.
Spare parts are specifically excluded from being filed as Functional design applications by our Designs Act, which is why the general practice has been adopted to file these as Aesthetic design applications. By spare part is meant a spare part for a vehicle, machine, or equipment such as, for example: a grille, a headlight assembly, or a bonnet for an automobile.
This practice has however changed since the validity of aesthetic designs for spare parts has been challenged in court, which ruled that spare parts possess no aesthetic features and are therefore not registrable as such. The outcome is that spare parts such as those described above are not protectable by a registered design in South Africa.
As our law stands at present, it is therefore not possible to obtain valid design protection for spare parts in South Africa, although, if such a design is filed, it will nevertheless proceed to registration.
Where an application for the registration of a design has not been finalised (i.e. the outstanding documents have not been submitted) by reason of default on the part of the applicant within 12 months from the date of lodging the application the Registrar is obliged to notify us of such non-finalisation in writing.
We then have one month to finalise the application, else it shall be deemed to have been withdrawn, unless the Registrar allows an extension of time for the finalisation.
In practice, the Registrar of Designs does however not issue Notices in respect of non-finalisation of South African design applications. We therefore recommend that all outstanding documents are submitted within 12 months of the South African filing date.
The design application is examined for conformation with all formal requirements and if these have been complied with, the application usually proceeds to registration within one year of its filing date.
A South African design registration is deemed to have been registered from the date of application. If the South African case claims a Convention priority, then the priority date is the “date of application”.
The life span of an aesthetic design registration is 15 years from the date of application and that of a functional design is 10 years from the date of application, subject to the payment of renewal fees.
Renewal fees are payable annually after the third anniversary of the date of application (which is the priority date for Convention applications). 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.
South Africa has been under lockdown due to COVID-19 since 27 March 2020 and we have moved to an alert level system having levels 5, 4, 3, 2, and 1 with level 5 being total lockdown.
We are now at alert level 1. As from 1 October 2020 and until further notice we will be operating with 75% staff complement at the office for the safety of our staff. There may be some delays but we will try to limit the impact as much as possible. CIPC (Patent Office) is open and filings continue as normal. However, since our Patent Office is not yet working with a full staff compliment delays in receiving official communications can be expected.