South Africa: So You Think You Can Patent Your Invention?

Last Updated: 11 April 2019
Article by Hugo Biermann

You’ve come up with a great new idea and believe you’re the first person in the world to have that idea. As you start planning world domination, you consider whether you can patent your invention. Patents protect new inventions and give the owner a 20-year head-start as it gives the owner a right to exclude others from making, using, importing or disposing of the patented invention.

Nic Rosslee had a bunch of questions for Hugo Biermann on this topic.

Nic: Hugo, what is the first thing our readers need to know about patenting their product?

Hugo: The most crucial element of patenting an invention is novelty – an invention must be new. Keeping this in mind, remember that if you have a potentially patentable invention, it must be kept secret until a patent application has actually been filed. Of course, this means that the invention must also not yet have been disclosed to the public by the inventor or anyone else, e.g. through earlier use, in earlier patent applications, on the Internet or in literature.

So I can’t tell anyone about my amazing idea?

You can only disclose it on a strictly confidential basis prior to filing a patent application. Once the invention has been made available to the public (which generally includes any commercial activity and any publication, e.g. on the Internet), it will no longer be possible to obtain valid patent protection. If you have to disclose the invention prior to filing, be sure to have a confidentiality or non-disclosure agreement in place.

Can that be a verbal agreement or does it have to be a formal signed agreement?

A signed formal agreement is not strictly necessary and the agreement may thus be a verbal one. However, I would strongly recommend having a written agreement in place.

Okay, so novelty is #1…

Yes, but there is another important patentability requirement, which is referred to as the "inventive step" requirement. This is also known as non-obviousness. This means that what you consider sets your invention from apart from the rest must be a step forward that would not be obvious to someone skilled in that particular field.

Anything else?

Yes, apart from the novelty and inventive step requirements, an invention must also relate to so-called "patentable subject matter". This means that certain types of inventions are simply not patentable. Under South African law, this includes inventions like business methods, methods of playing games, scientific theories and discoveries, mathematical methods and computer programs as such.

Why did you say computer programs “as such”? Don’t Uber have patents?

Well, this is where the law becomes tricky. Our Patents Act prevents the aforementioned types of inventions from being patented only to the extent to which they relate to the excluded subject matter as such. In other words, if the inventive step of your invention relates solely within an excluded area, like a business method or computer program, it will not be patentable. However, if your invention includes one or more inventive technical features, which go beyond the excluded area, it may be patentable.

Unfortunately, this is still somewhat of a grey area in South African law, and we cannot provide you with clearly defined guidelines or criteria to evaluate this. In general, the more novel technical aspects that are included, the greater the likelihood that the invention will be patentable. For example, if your invention has a new, technical feature that solves a technical problem encountered when using existing systems, it may well be patentable.

Companies like Uber do not obtain patents for "abstract ideas" or pure business methods. Instead, they have been successful in obtaining patents for inventions that solve technical problems and improve the technical functioning of computerised systems.

How do you know if your product is novel?

We can conduct searches of the patent databases to obtain an idea of the novelty of an invention. We refer to these as novelty searches. This is a useful step to take before you begin incurring filing costs.

A novelty search is an optional step, but one that we typically recommend to our clients, especially when an invention comprises a combination of known elements.

I’m imagining a cross between Uber and a home cleaning service? Would I need to conduct a search?

Well, you’ve just invented SweepSouth, a South African startup that’s doing really well. So I wouldn’t recommend conducting a search in this case. Your flat in need of a spring clean?

*Nic decides to let this comment go through to the proverbial wicketkeeper*

Where were we… Oh, you can’t cover the world with one patent, right?

Patents are territorial and it is not possible to obtain an enforceable "international patent" by filing a single application. Ultimately, you need to file separate patent applications in each country/region in which you want to pursue patent protection. However, foreign patent applications can be based on the first filing for an invention in a single country of origin. This does not have to be a complete patent application, as there is the option of filing of a provisional patent application in South Africa.

Okay, how long do I have to file for my invention globally once filing a provisional patent in South Africa?

Both the South African complete patent application and any patent applications outside of South Africa must be filed within 12 months of the date of filing the provisional application. If you don’t file the complete patent application(s), the provisional patent application will lapse.

It should also be noted that you don't have to start the process by filing a provisional application. In some cases, like when your invention is in its final, commercial form, you may simply want to file a complete patent application in the first instance.

Okay, so 12 months and you’ll need to have filed in all your desired territories?

Well, there is another option. There is a mechanism called the Patent Cooperation Treaty (PCT) and you can file a PCT application within the 12 month period referred to earlier. A PCT application may be thought of as a bridging or temporary international patent application. While it does not in itself get granted or become an enforceable right, it reserves the applicant's rights in about 150 PCT member states for an additional 18 months or more. This means you can potentially have up to 30 months between the date of your filing of the provisional patent application to file your individual national patent applications in the countries/regions of interest.

Is that all I need to know about PCT applications?

No, after filing a PCT application an International Searching Authority (typically one of the large patent offices such as the European Patent Office or the United States Patent and Trademark Office (USPTO)) conducts a prior art search and establishes an “International Search Report”. This is a preliminary, non-binding written opinion on the patentability of the invention.

The written opinion provides the applicant with an indication of the novelty and inventive step of the invention. There is an opportunity to respond to the written opinion and potentially amend your specification to overcome any objections raised. Before the end of the PCT phase, the applicant must proceed with patent applications in the elected countries/regions. In other words, the PCT application is not an "international patent" and if you don't proceed with national patent applications, you will have no protection.

This sounds expensive.

It’s not lunch money… There is good news, natural persons (i.e. not a company or other juristic person) who are nationals of and residents in South Africa are currently entitled to a discount of up to 90% on the official international filing fee for and the official handling fee associated with a PCT application. Discounts are also available for natural persons or companies who qualify as "small entities" or "micro entities" in terms of the rules of the USPTO.

Thanks, Hugo

Cheers, Nic

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Similar Articles
Relevancy Powered by MondaqAI
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Practice Guides
by Mondaq Advice Centres
Relevancy Powered by MondaqAI
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions