ANNEX TO LETTER REPORTING THE FILING OF A PCT PATENT APPLICATION

1. NOVELTY

In order to satisfy the novelty requirements for patentability in South Africa, an invention must not have formed part of the state of the art immediately before the priority date of that invention. The state of the art is defined as comprising all matter which has been made available to the public, anywhere in the world, by written or oral description, by use or in any other way. For the purpose of assessing novelty (but not obviousness) the state of the art also comprises matter contained in an earlier South African application (ie having an earlier priority date), even if such earlier application has not yet been made available to the public at the priority date of the invention in question.

2. INVENTIVE STEP/NON-OBVIOUSNESS

An invention shall be deemed to involve an inventive step if it is not obvious to a person skilled in the art, having regard to any matter which forms part of the state of the art immediately before the priority date of the invention.

3. PATENTABLE INVENTIONS

Patentable inventions are those which are new, involve an inventive step, and are capable of being used or applied in trade, industry or agriculture. The following are not patentable inventions:

(a) a discovery;
(b) a scientific theory;
(c) a mathematical method;
(d) a literary, dramatic, musical or artistic work or any other aesthetic creation;
(e) a scheme, rule or method for performing a mental act, playing a game or doing business;
(f) a program for a computer; or
(g) the presentation of information.

Furthermore, a method of treatment of the human or animal body by surgery or therapy or of diagnosis, is not a patentable invention.

3.1 ANIMAL OR PLANT VARIETIES

Section 25(4)(b) of our Patents Act provides that a patent shall not be granted “for any variety of animal or plant or any essentially biological process for the production of animals or plants, not being a micro-biological process or the product of such a process”. This section of our Patents Act has not yet been the subject of litigation in South Africa and has not been interpreted by our Courts. However, should it come before our Courts, we believe that relevant prior decisions of the European and particularly British Courts may be regarded persuasive by our Courts. It appears to us [to be at least arguable] that none of the claims falls within the ambit of the prohibition of section 25(4)(b), and we therefore suggest that the claims be retained in their present form, at least for the time being. [We attach a copy of our memorandum on Section 25(4)(b) Patenting of Animals and Plants.]

Our patent system is based on those of the EPO and UK, and if a corresponding European or particularly British application has been filed with claims similar to those of the present application, we suggest that you let us know, in due course, what attitude the European and/or British Patent Office has adopted, and that the South African claims, in any case, be reviewed at that time, in the light of such attitude. We attach a copy of our Memorandum on Amendments and refer you to paragraph 4 thereof which sets out the provisos which govern allowable amendments.

3.2 SOFTWARE AND/OR MEDIA/SIGNAL STREAM RELATED INVENTIONS

We attach a copy of an extract from section 25 of our Patents Act and refer you to sub-section 25(2) which defines what is not a patentable invention. We refer you, in particular, to sub-sections 2(e), (f) and (g). [We further attach a copy of our memorandum on Software Related Inventions.] If you are not satisfied that the invention as defined in each of the proposed claims of the present application, avoids the prohibitions of sub-section 25(2), please let us know. The claims can be amended at any time while the application is pending.

Our patent system is based on those of the EPO and UK, and if a corresponding European or particularly British application has been filed with claims similar to those of the present application, we suggest that you let us know, in due course, what attitude the European and/or British Patent Office has adopted, and that the South African claims, in any case, be reviewed at that time, in the light of such attitude. We attach a copy of our Memorandum on Amendments and refer you to paragraph 4 thereof which sets out the provisos which govern allowable amendments.

3.3 BUSINESS METHODS

We attach a copy of an extract from section 25 of our Patents Act and refer you to sub-section 25(2) which defines what is not a patentable invention. We refer you, in particular, to sub-sections 2(e), (f) and (g). [We further attach a copy of our memorandum on the Patentability of Business Methods in South Africa.] If you are not satisfied that the invention as defined in each of the proposed claims of the present application, avoids the prohibitions of sub-section 25(2), please let us know. The claims can be amended at any time while the application is pending.

Our patent system is based on those of the EPO and UK, and if a corresponding European or particularly British application has been filed with claims similar to those of the present application, we suggest that you let us know, in due course, what attitude the European and/or British Patent Office has adopted, and that the South African claims, in any case, be reviewed at that time, in the light of such attitude. We attach a copy of our Memorandum on Amendments and refer you to paragraph 4 thereof which sets out the provisos which govern allowable amendments.

3.4 NUCLEAR ENERGY

In summary:

3.4.1 An applicant who lodges a patent application relating to the production or use of nuclear energy, or the production, processing or use of nuclear material or restricted matter, must-

(a) immediately notify the Minister of Energy in writing of that application;
(b) furnish the Minister with a copy of the specification relating to the invention; and
(c) provide the Minister with any other information regarding the invention that the Minister may require.

3.4.2 The Minister may, for a period of 3 months (further extendible) stay the prosecution process of the patent application pending his decision as to whether or not the application should be refused in terms of section 41(5). If not, he will direct the Registrar of Patents to continue the prosecution of the patent application.

3.5 ARMAMENTS

The Minister of Energy, in collaboration with the Minister of Defence, has a discretion to call upon a proprietor to assign his invention relating to the production or use of nuclear energy or the production, processing or use of nuclear material or restricted matter as defined in section 1 of the Nuclear Energy Act to the State. Section 79(1)(b) of our Patents Act, which was amended by Section 42(3) of the Nuclear Energy Act, reads as follows:

‘The proprietor of an invention relating to the production or use of nuclear energy or the production, processing or use of nuclear material or restricted matter as defined in section 1 of the Nuclear Energy Act, 1999, shall, if called upon to do so by the Minister of Energy, assign the invention or patent obtained or to be obtained for the invention, to the Minister of Energy on behalf of the State-

(i) If the interests of the security of the Republic so require. However, such an assignment may be made only at the request of the Minister of Defence;

(ii) If the commercial exploitation of the invention is not permissible in terms of the Nuclear Non-Proliferation Treaty or the Safeguards Agreement as defined in section 1 of the Nuclear Energy Act, 1999, or in terms of any other agreement of that kind between the Republic (including its national agency with regard to the nuclear matters) and any other state or any international or multi-national nuclear agency or institution’.

4. MISREPRESENTATION

The declaration/power of attorney (Form P.3) executed on behalf of the applicant declares that the earliest Priority Application from which priority is claimed is the first application in a convention country in respect of the invention claimed in any of the claims of the application. If any Priority Application has an extended ancestry which starts with an earlier application, misrepresentation may have arisen.

To avoid misrepresentation, which is a valid ground for revocation of a patent, the claims of the application may not be directed to subject matter disclosed in any related application preceding the earliest Priority Application.

5. EXCHANGE CONTROL

Exchange control is applicable when “capital” is exported from South Africa by a South African resident to a foreign entity. In this context a South African resident will include someone of foreign nationality who has taken up residency in South Africa and South African nationals who are resident elsewhere but still domiciled (for the purposes of our Reserve Bank) in South Africa. In terms of an amendment to the Exchange Control Regulations, capital now specifically includes any intellectual property, and ‘exported from the Republic’ includes “…assignment or transfer of any intellectual property right”. Thus, assignment of an invention by a South African resident, to a foreign entity, is subject to Exchange Control, and such an assignment may have tax-related implications for the assignor unless Exchange Control approval has been obtained.

6. IMPERIAL/METRIC MEASUREMENTS

In terms of Regulation 17 of our Patents Act, it is a requirement that measures be expressed in terms of the metric system. If measures are not expressed in terms of the metric system, please let us know as a suitable amendment needs to be made.

7. EXAMINATION AND ACCEPTANCE

The South African patenting procedure does not include a search by the South African Patent Office authorities, nor substantive examination of the patent specification, nor opposition proceedings. Accordingly, if the formal (i.e. documentary) requirements are satisfied, the Registrar may issue acceptance at any time in his discretion without forewarning, and a patent will be granted on the application. However, at any time during the life of a patent, a third party can apply to the Commissioner of Patents for revocation of the patent on a number of prescribed grounds which include lack of novelty and obviousness. Generally a South African application is formally accepted within about nine to twelve months of filing, provided the formal requirements have been satisfied. A patent issues within two or three months thereafter, and then the scope of allowable amendments is restricted.

8. DEFERRING GRANT AND FILING DIVISIONAL APPLICATIONS

It is possible, as of right, on request to the Registrar, to defer grant of the patent by delaying acceptance up to twenty-one months from the South African filing date for national applications, and up to fifteen months from the South African filing date for PCT national phase applications. A delay of acceptance can provide more time for possible review of the South African claims, in the light of prior art which may be cited during prosecution of corresponding applications in other countries.

The request to delay acceptance can be made at the time of filing, or any time thereafter before the issue of the acceptance.

Further, discretionary, delays would usually be available.

Divisional applications can only be filed prior to acceptance.

9. TERM OF A PATENT

The term of a patent for national applications is 20 years from the South African filing date, and for PCT national phase applications is 20 years from the filing date of the PCT International application.