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Chemical Technology • December 2015
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Are South African patents
going to be stronger in the future?
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
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.