HOW LONG DOES A PATENT LAST?


Under normal circumstances, a South African patent lasts for 20 years from the date on which the complete patent application was filed at the Patent Office. In addition, an annual renewal fee must be paid starting from the third year after the complete application was filed to keep the patent in force. Each annual fee must be paid on or before the anniversary of the date of filing of the complete application (subject to a six month extension on payment of a fine).

If a patent lapses because a renewal fee has not been paid, and the failure to pay the fee can be shown to have been unintentional, the patent can be restored upon application being made to the Registrar of Patents. A restored patent may not be enforced against persons who started to use the invention while the patent was lapses.

INVALID PATENTS

A patent may be declared invalid and revoked in court at any time after it has been granted.

A limited number of grounds of revocation exist. One ground of revocation is that the patent does not fulfil the requirements mentioned above. Usually this occurs if information destroying the novelty of the invention comes to light which was not known at the time the patent application was filed.

Another, less common, ground of revocation is that the patent application included misrepresentations made to the patent office in the patent application. Fraud, ambiguity and inutility are other revocation grounds.

INFORMATION REQUIRED FOR A PATENT APPLICATION

In order to draft a patent specification the following information is required:

• A complete description of the invention;
• If applicable, sketches, drawings or photographs, or a model of the invention should be provided;
• Where possible, the description of the invention should explain how the invention is distinguishable over the prior art;
• Where more than one embodiment of the invention is known, details of all the embodiments should be provided;
• The full names and residential addresses of all the inventors;
• Where the application is to be filed in the name of a person or entity other than an inventor, the full name and address of such person or entity are required.
  

PROCEDURE FOR APPLYING FOR A PATENT

In South Africa, a two-stage procedure for obtaining a patent is generally, although not necessarily, followed:

First, a provisional patent application is filed. Within a period of twelve months from the filing of the provisional application (or fifteen months on payment of a prescribed penalty fee), a complete patent application, claiming priority from the provisional application, is filed. However, the filing of a provisional application is not mandatory and it is possible to file a complete patent application for an invention in the first instance.

The Provisional Patent Application

A provisional patent application is accompanied by a provisional specification, which must fairly describe the invention. Where appropriate, the specification also contains drawings illustrating the invention. The provisional patent application will lapse unless it is completed within twelve months by the filing of a complete patent application. (In South Africa, a maximum extension of three months may be obtained for the filing of a complete specification on payment of a small fee.)

The Complete Patent Application

A complete patent application is accompanied by a complete specification which must sufficiently  describe the invention for a person skilled in the art to perform the invention. The complete specification contains claims and, where appropriate, formal drawings. Our charges for the preparation of a complete specification, including the drawings, and the filing of an application accompanied thereby will amount to between approximately R8000 and R12000 (excluding VAT).

The exact amount will depend on the complexity of the invention, the field to which the invention relates and the number of drawings required.

It is possible to file a complete patent application in the first instance, without having first filed a provisional patent application. The advantage of filing a complete application in the first instance is that the time taken from the filing of the first application to the grant of a patent is reduced.

However, the filing of a complete application in the first instance will generally be more expensive than the filing of a complete application that is based on an earlier provisional patent application. Further, the possibilities for incorporating developments or improvements to the invention in a patent are strictly limited once a complete patent application has been filed.

TERM AND EFFECT OF A PATENT


The term of a patent in South Africa is twenty years from the date of filing of the complete patent application, subject to the payment of prescribed renewal fees. Renewal fees are payable annually from the third year after filing of the complete application.

The effect of a patent is to grant to the patentee the right to exclude other persons from making, using, exercising, disposing or offering to dispose of, or importing the invention. It is important to note that a South African patent confers patent rights only in South Africa. If patent protection is required in any other country, it is necessary to apply for and be granted a patent covering that country.

FOREIGN PATENT PROTECTION

South Africa is a member of the Paris Convention. An applicant for a patent in any country which is a Paris Convention member (“Convention country”) has the right to file corresponding applications in any other Convention country within twelve months of the filing of the first patent application. This period is not extendable.

Most major industrial countries are members of the Paris Convention, but notable exceptions are Taiwan and a number of South and Central American Countries. A full list of Paris Convention member states may be obtained from our offices on request. We will also be pleased to provide detailed advice on the filing of foreign patent applications.