Differences Between Australian And South African Patent Practice And Law

by FPA Patent Attorneys
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The South African economy is the largest in Africa, contributing approximately 18% to the African Gross Domestic Product in terms of PPP.  This economic strength combined with sophisticated financial services and commercial infrastructure as well as a well-developed legal system, makes South Africa one of the preferred gateways into sub-Saharan Africa, ideal for investment and also a country to consider when extending a patent portfolio abroad.

Although both Australian and South African patent legislation have their roots in British or English patent law, key differences exist and should be considered when dealing with the prosecution of patent applications and considering enforcement of patents in South Africa.

Key differences

A fundamental difference is that South Africa has a non-examining patent office, which means that patent applications are only examined in terms of formal requirements. The patenting process in South Africa is accordingly (relatively) cheap and costs are very predictable. However, with no examination an onus is effectively placed on the applicant/patentee to ensure that a South African patent proceeds to grant in a valid form and remains in valid form after grant. This is of particular importance as the South African courts will not grant a patentee infringement relief on a partially invalid patent. The courts may also take a patentee’s conduct in leaving a patent in an invalid form into consideration when deciding on matters relating to damages and costs. It is therefore important always to consider amending the claims of a South African patent whenever relevant prior art comes to light.

South African patent legislation does not provide for a grace period or for extended patent terms.  There is also no limitation on the number of claims or pages of the specification.  In comparison with other countries and in line with patent prosecution costs, renewal fees for South African patents are very low.

The following table is a comparison of the South African patent system with the Australian patent system applicable to applications for which examination was requested after April 15, 2013.

 

AUSTRALIA

 

 

SOUTH AFRICA

FILING REQUIREMENTS

31 months

National phase deadline

31 months, 3 month extension available

Not required

Power of attorney

Declaration and power of attorney required

English

Filing language

English
For non-English applications, translations should be provided 3 months post-filing

EXAMINATION

18 months after priority date

Publication

At grant (ie publication of acceptance)

Within 2 months of the Patent Office issuing the direction to request examination

Examination requests

No substantive examination,
no examination request to be filed

- Novelty
- Inventive step (obviousness)
- Unity
- Support & best mode
- Claim clarity
- Patentable subject matter
- Utility

Grounds of examination

Formal requirements only

 

Absolute

Novelty standard

Absolute

Yes – complete Australian application must be filed within 12 months of disclosure of inventor or his assign’s publications

Grace period

No

Allowable – as well as Swiss form claims

Methods of medical treatment

Not allowable – but Swiss form claims are

Allowable

Computer programs

Computer programs are unpatentable, per se
No certainty as to how the South African courts will interpret the law, best to file

Yes – fees payable for more than 20 claims, at time of acceptance

Excess claims

No limitation on claim number

No

Prior art disclosure obligation

No

12 months from first report

Final acceptance deadlines

18 months from filing date (standard application); or
12 months from national phase filing date

Generally within 3 months of advertisement of acceptance

Divisional filing deadlines

Prior to acceptance

Yes

Post-acceptance amendments

Yes

 

OPPOSITION

 

Pre-grant opposition

Type

None
But revocation proceedings may be filed

Same as for examination and further including entitlement to grant

Grounds of opposition

None

 

REVOCATION /
RE-EXAMINATION

 

Re-examination by
Patent Office

Type

Revocation proceedings before the court

Same as examination

Grounds of revocation / Re-examination requirements

- Lack of novelty
- Obviousness
- No fair basis
- Claims are unclear
- Insufficiency
-Inutility
- Unpatentable subject matter
- False declaration
- Immoral or frivolous subject matter
- Where relevant, micro-organism not deposited
- In fraud of rights

GENERAL

Yes

Signatory to Budapest Treaty

Yes

Yes – up to 5 years for pharmaceuticals in the medical field (excludes veterinary)

Extension of term for pharmaceuticals

No

Annually from 4 years after filing

Renewals

Annually from 3 years after filing, but only due after grant

 

 

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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