Chemical Technology December 2015

Are South African patents going to be stronger in the future? by Claudia Berndt, BEng, LLB, Patent Attorney, Hahn & Hahn, Pretoria, South Africa The South African Patent Office recently announced, however, that it has plans to commence, in about two years’ time, substantive examination of patent applications.

A s anyone who has filed a patent application in South Africa will know, the South African patent office does not examine patent applications for patentability of the invention. If all formalities are complied with, a patent will then be issued on every patent application. In terms of the Patents Act, it is the duty of the patentee to ensure that his or her patent is valid by taking all known prior art into account, but there is no check on this by the patent office. The South African Patent Office recently announced, however, that it has plans to commence, in about two years’ time, substantive examination of patent applications. Exam- iners are currently being trained and, if all goes according to plan, selective examination of South African complete patent applications will commence in or before mid-2017. The term ‘selective’ is used because patent examiners are highly qualified individuals with technical knowledge of the subject matter relating to the patent application. How does the process work presently? At the moment, the South African Patent Office only carries out a check on applications to confirm whether they comply with all the formal filing requirements, eg, have the correct fees been paid and all application forms submitted; have an Assignment of Invention (if applicable) and a Declaration and Power of Attorney been submitted, and so on. Once all formal filing requirements have been complied with (and sometimes even if they have not), the applica- tion is accepted and advertised, on which date the patent is deemed to have been granted. As a result, many South African patents will have been granted which are not valid in

terms of the criteria of novelty and inventive step prescribed by our Patents Act. This so-called ‘deposit system’ has worked well in South Africa, having kept the Patent Office’s official fees low. The validity of patents is only decided upon when it really mat- ters, namely, in court, during either patent infringement or revocation proceedings, which typically go hand-in-hand. Section 34 of our present Patents Act prescribes that the Registrar examines (in the prescribed manner) every application for a patent and every complete specification accompanying it (or lodged at the patent office in pursuance of such application) and, if it complies with the requirements of this Act, the Registrar will accept it. In practice this ‘examination’ relates to only the formal requirements and, mainly due to a lack of qualified examiners to do so, the Registrar will not consider the sections of the Act dealing with the substantive validity of patents, eg, lack of novelty or lack of inventive step. What does substantive examination entail? Substantive examination looks into the patentability of the subject matter described in the claims of a patent. Three core criteria need to be fulfilled in order for an invention to be patentable in terms of our law: novelty; inventive step/ obviousness; and industrial applicability. The subject matter of a patent is ‘novel’ if it has not been part of the ‘state of the art’ prior to the date of that invention, ie, the invention may not have been disclosed to the public in written, printed, physical, or any other form anywhere in

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Chemical Technology • December 2015