SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
1. Intellectual Property Rights and Granting Procedure 1.1 Types of Intellectual Property Rights Patents, registered designs (functional and aes- thetic), plant breeders’ rights (for plant varieties and GMO plant varieties) and copyright are the different types of intellectual property rights in South Africa, and they are based on statutory law. 1.2 Grant Procedure The grant procedure for each intellectual prop- erty right is as follows. Patents South Africa is a member of the Paris Conven- tion and the Patent Cooperation Treaty (PCT), thus providing two main filing routes by which a foreign inventor/applicant may obtain a patent. It is important to note that South Africa is currently a non-examining country with regard to the con- tent of a patent specification. Therefore, as long as the formal requirements are met, the patent will be granted. Only during infringement and/ or revocation proceedings will the substance of the specification be examined by the court for novelty, inventiveness and applicability. For the Republic-based route to grant a patent, the following general procedure occurs: • priority is established through the filing of a provisional or complete patent application in South Africa or by the first convention appli- cation in a Paris Convention member country; • for a foreign applicant, a patent can be obtained through the filing of a convention application claiming priority or a PCT national phase application; • when a complete specification has been lodged at the Patent Office (through the
applicant’s attorney), the applicant has 18 months (extendable by three months, or more if good cause is shown) in which to bring the application into acceptable order for formal acceptance (ie, the filing of declarations) – if the application is not in acceptable format by the deadline, the application is deemed to have lapsed; • once the application is accepted, the regis- trar will provide a notice of acceptance along with the date of acceptance (also recorded in the patent register), and the applicant must have the patent specification published in the patent journal within three months (extend- able by prior request with good cause) – if no publication occurs within this time or a prior accepted extension, the patent application will be deemed to have lapsed; and • the patent is deemed to be granted on the date of publication, and the term will start from the date of filing the application with the Patent Office – after publication, the registrar will issue a certificate for the letters patent. There is, however, a nine-month moratorium (except with leave of the commissioner) on insti- tuting infringement proceedings from the date of grant. For a South African PCT national phase appli- cation, the following general procedure applies. Applicants need to file the national phase com- plete specification within 31 months of the ear- liest priority date claimed in the PCT applica- tion. This is extendable by three months upon request, or by condonation. It is important to note that the national phase application date is deemed to be the PCT application filing date, and thus the term of monopoly begins from this date. Once the national phase application has been accepted by the Patent Office, the procedure going forward is identical to that of
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