Patents

Patents Explained

These notes deal with patents for inventions. We can assist you with patent matters in South Africa and other countries. If, after reading these notes, you have any questions, please do not hesitate to approach us.

Invention | patents are there to protect inventions — we like this definition of an invention:- an invention is any new and inventive article of manufacture, machine, process, or composition of matter, that is capable of being used or applied in commerce.

In this definition:

• new | means novel, never been seen before, anywhere in the world
• inventive | means not so obvious that people in the field would develop it without much effort
• invention | certain things, such as computer programs, methods of doing business, methods of playing games, and the presentation of information, are specifically excluded by law from qualifying as inventions, but the potentially disqualified invention might still be patentable if it can be shown to have a real-world, technical effect.

Idea | even though an invention is defined as a thing or a process, inventions are basically ideas it is the underlying idea that is protected by patent law. Patent law provides the only legal protection for underlying ideas — the only way to protect an idea is to register a patent in respect of the idea. Patents normally do not protect the detailed implementation of the idea — instead, the patent protects the principles of the underlying idea so that different implementations of the idea will all infringe the patent.

Infringement | pending patent applications (a provisional patent application and a pending complete patent application) confer no rights and cannot be enforced against third parties who make or sell the invention without authorisation.Before grant of the patent, therefore, threats of legal action must be avoided.

Related law

• patents do provide protection against slavish copying, but copyright is better for this purpose
• patents do protect the design or shape of an article, but a design registration is better for this kind of protection
• a patent does not protect the name of the product – this is what trade mark registrations are for

Patenting your invention

To enable us to assist you in preparing and filing a patent application we require a description of the concept or invention that should include, at least, the following:

• a full description of the invention and its novel features, accompanied by sketches, drawings, diagrams or flow charts of the invention, as appropriate — we can get this information from you by email or by discussing the invention with you in consultation
• an indication of the features of the invention that distinguish the invention from existing technology
• details of any alternative forms of the invention or of possible modifications thereto that you might want to introduce in future
• we need this information because the workings of the invention will have to be described in some detail so that it is clearly understandable to a person skilled in this technology in issue

Process

The process of obtaining a patent is a multi-stage process, potentially involving multiple countries, and is briefly outlined below.

Provisional patent application

Conventionally the patenting process starts with the filing of a patent application, normally a provisional patent application, in South Africa.

The filing of this first patent application marks the beginning of a 12 month priority period that is derived from the Paris Convention, an international treaty of which South Africa is a member. The treaty allows you to keep your options open for 12 months to file a complete patent application or applications in South Africa and elsewhere. The priority period is typically used to conduct further development on the product to be patented and also to test the product in the marketplace to see if the product is successful and worth the cost of the patenting procedure.

Complete patent application | South Africa and other countries

To obtain a patent that is enforceable against third party infringers, it is necessary to file a complete patent application that must be prosecuted to grant by the relevant patent office. Only when the patent has been granted can it be enforced.

A complete patent application typically follows a provisional patent application and claims the rights of priority of the provisional patent application. However, if the invention is fully developed and market-ready, you could consider filing a complete patent application in the first instance.

Patent Co-operation Treaty (PCT)

The Patent Co-operation Treaty provides a facility to file a so-called “international patent application” as an alternative second stage in the patenting process.

The PCT is an international treaty, administered by the World Intellectual Property Organization (WIPO) that makes it possible to apply for patent protection, simultaneously, in each of a large number of countries by filing a single international patent application instead of filing several separate national or regional patent applications.

It is important to realise that the international application does not give rise to a corresponding international patent. As you will see, the granting of final patents remains under the control of the national or regional patent offices in what is called the “national phase”.

In outline, the PCT procedure includes an 18 month International Phase, followed by a National Phase – including the following steps:

• International Phase

  Upon filing a PCT patent application, the application first enters an 18-month long International Phase that has the following procedural processes:

  • Filing: you file an international application, complying with the PCT formality requirements, in one language, and you pay one set of fees.
  • International Search: the International Bureau sends the application to an International Searching Authority (typically one of the major patent offices) for a search that is intended to identify the published documents (otherwise known as prior art) that may have an influence on the invention. The International Searching Authority also expresses an opinion on the potential patentability of the invention. It is permissible to file amendments to the international application to take into account the prior art uncovered by the International Searching Authority.
  • International Publication: approximately 6 months into the International Phase, the PCT International Bureau publishes the international application.
• National Phase

  At the end of the 18-month International Phase, if it is decided to proceed, the international patent application must be extended to the country or countries of your choice by filing a copy of the PCT patent application in those countries.

  Regional patent offices, such as the European Patent Office, introduce yet a further stage in which the patent application is first extended to the Regional Patent Office and then filed in the country or countries of your choice in that region.

  There are three regional systems that may be of interest to SA patentees. These systems are the European regional system (which covers the countries of the European Union and the UK), the ARIPO system (which covers 15 countries in Africa – basically the sub-Saharan English speaking countries, but not including South Africa) and the OAPI system (which covers 16 countries in Africa – basically the West-African French speaking countries).

  Many countries and regions carry out their own searches and patent examinations and these procedures can take from one to five years or longer (depending on the country or region), and the costs involved in the examination procedure can be the same as, or more than, the initial filing costs.

  At the end of the country procedures, each country (if the invention is found to be patentable that country) grants a separate for the invention in that country. After grant, a patent typically lasts 20 years from the filing date of the international application.

Costs

Our charges for preparing and filing a patent application depend on the complexity of the invention and the time it takes to prepare the specification. We can give you an estimate of costs once we receive details of your invention and the country or countries of interest to you.