South Africa joined the PCT in 1999. The national phase entry deadline is 31 months from the priority/ first filing date of the PCT application. South Africa is not a member of ARIPO.
In general, all the information we require to file a PCT national phase patent application in South Africa can be found on the front sheet of the WO publication. An exception to this is where there has been a change in the data reflected on the WO publication or where the South African national phase is to be filed in the name of a new applicant. In this case, we require the full name and physical address of the new applicant.
Additional documents that are helpful to us are: the PCT Request, the complete WO publication, amendments submitted during the PCT phase, the ISR and IPER, a copy of the specification and claims as they stood immediately prior to the South African national phase entry in Word format.
Although we can submit scanned copies of the documents listed under 1. to 4. above when filing the South African application, we require the originally signed copies 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.
If the PCT application was not filed in English, we need to submit a verified translation thereof into English together with a translation of any amendments made during the international stage within three months of the 31-month national phase entry deadline.
IMPORTANT: Please note that this deadline is NOT extendible.
Unless a Declaration in terms of PCT Rule 4.17 (ii) or (iii) was submitted when filing the PCT application, it will be necessary to show how the Applicant obtained the rights in the invention from the inventors. We shall provide you with an Assignment of Invention for signature.
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 South African national phase patent 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 and Form P26 can be filed within six months of the national filing date. Extensions of this deadline are available upon application made.
If a priority document was submitted in terms of Rule 17.1 this does not need to be submitted at the South African Patent Office.
It is not possible to amend any part of the specification, claims or drawings prior to entering the national phase in South Africa, i.e. the PCT application as it stood immediately prior to national phase entry becomes the South African national phase.
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 in the South African Patent Journal.
It is possible to file a voluntary amendment to the specification and/or claims prior to acceptance of the application. We typically file voluntary amendments around 3 months after filing the case to, for example, amend or delete wording that may form basis for an application for revocation and to add omnibus claims.
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 national phase have been filed in examining jurisdictions, we highly recommend amending the claims of the South African application to be in line with an examined set of foreign claims.
We further recommend that such an amendment be filed before acceptance of the South African application. As examination in foreign jurisdictions typically takes several years, we can file an application to delay acceptance of the South African patent application 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 case was filed long thereafter.
A South African national phase patent application will lapse 12 months from the national phase entry date if all formal filing requirements have not been complied with at that date. We therefore automatically delay acceptance of all South African national phase patent applications by a further six months should all formal filing requirements not have been met immediately prior to the 12-month deadline.
Renewal fees are payable annually after the third anniversary of the international filing date of the PCT application until expiration of the patent 20 years from the international 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.
If a South African national phase patent application is granted three months or more before the expiration of 36 months from the international filing date, the first renewal fee is payable 3 years from the international filing date. If the application is granted after the expiration of 36 months from the international filing date or less than three months prior to such expiration date, the patentee can pay any renewal fees payable within six months of the date of grant of the South African patent. Thereafter, renewal fees are paid annually on the anniversary of the international filing date.