CONVENTION AND NON-CONVENTION APPLICATIONS

Changes to the specifications of these applications can be made before filing the patent specification at the South African Patent Office. The specification is then filed in its amended form at the Patent Office. In this event it is not necessary to follow formal amendment procedures prescribed in the South African Patents Act, thereby reducing costs and simplifying procedure. However, where we are instructed to file a Convention or non-Convention application at the last minute, time constraints often limit our ability to provide advice as to amendments or to make the amendments to the specification, in which event the procedure for amendment set out below for PCT applications must be followed.

PCT NATIONAL PHASE APPLICATIONS

South African law provides that amendments made to the PCT International patent application under Article 19 or Article 34 PCT are automatically included in the specification of a South African National Phase application. This does not apply to Article 41 amendments, which must be included in the specification by way of amendment during National Phase.

A PCT application designating South Africa is deemed to be an application lodged at the South African Patent Office. The South African Patent Office obtains directly from WIPO a copy of the PCT pamphlet, which includes any amendments to the specification made during the International phase of the PCT application. Once National Phase is entered, South African law becomes effective and any amendments (such as amendments under Article 41) must follow formal application procedures and restrictions as set out below.

AMENDMENTS

In South Africa, advertisement of acceptance of a patent application in the Patent Journal amounts to public disclosure of the invention and the date of publication is also deemed to be the date of grant of the patent. It is quicker, cheaper and easier to amend a specification prior to publication rather than after publication.

REQUIREMENTS FOR AMENDMENTS

When applying for an amendment of a patent specification, the patentee must set out the full reasons for making the amendment. Where we advise on the making of amendments in order to comply with South African law and practice, we will also advise on the statement of reasons for the amendments.

No amendment, whether before or after grant, may introduce new matter or matter not in substance disclosed in the specification before amendment. Also, the specification as amended may not include any claim not fairly based on matter disclosed in the specification before amendment.

After grant, there is an additional requirement that the amendment may not extend the scope of the claims included in the specification before amendment.

PROCEDURE FOR AMENDMENT

Before grant, an amendment is effected by making application to the Registrar of Patents. If the Registrar is satisfied that all formal requirements have been complied with, the amendment is allowed. The specification in its amended form then proceeds to grant.

If an application for amendment is made after grant, the Registrar, after satisfying himself that all formal requirements have been met, directs the patentee to advertise the amendment in the South African Patent Journal for opposition within a period of two months. Any person may oppose the application for amendment. Opposition proceedings take place in the Court of the Commissioner of Patents, which has the status of the High Court of South Africa. If the application for amendment is not opposed, the Registrar allows the amendment.

Opposition proceedings may be both costly and protracted. We therefore strongly recommend that applications for amendment be filed before grant of the patent. In some circumstances it is useful to delay acceptance of the application or, if acceptance has already taken place, to delay publication of acceptance.

ACCEPTANCE AND DELAYING ACCEPTANCE

In terms of the Patents Act, acceptance of a convention application should take place not longer than 18 months from the date of application. Acceptance of a South African National Phase patent application should take place not longer than 12 months from the date of entering national phase. However, delays are commonplace.

Acceptance may be delayed for a period of up to 3 months beyond the dates specified above on application to the Registrar and on payment of the prescribed fee. Thereafter, the Registrar of Patents may extend the acceptance date for further periods, provided that good cause is shown. An example of what amounts to good cause is that the applicant wishes to amend the specification to bring it into line with corresponding applications being prosecuted in other jurisdictions.

DELAYING PUBLICATION

Ordinarily, publication of acceptance must take place within 3 months of the date of acceptance. It is, however, possible to extend the publication date by making an application to the Registrar of Patents. Again, the applicant must show that there is good cause for delaying publication and an extension fee must be paid. If preparations have been initiated for publication of acceptance it may be necessary to withdraw publication. This is only possible if the Government Printer is notified more than one month prior to the date of publication.

CORRECTIONS

Clerical errors or errors in translation may be rectified by way of a correction. A clerical error has been defined by our courts as “a careless error because it is unintentional”. A clerical error is, therefore, not one made through ignorance or deliberately.

As with any other amendment, an application for correction of a clerical error must be made to the Registrar of Patents. It is not necessary for such corrections to be advertised for opposition purposes, unless the Registrar is of the view that the correction will materially alter the scope of the patent.

Both corrections and amendments may be made at any time between the lodging of a patent application and expiry of the term of the patent.