Compelling Case for Patenting in South Africa

South Africa (SA) is widely recognised as the gateway to the rest of Africa, a continent which contains 30% of the world’s mineral reserves, and 1 billion people. It is therefore an attractive launch pad for many international companies when it comes to the protection and enforcement of intellectual property of services or products owned by them that they wish to share with Africa. Even more attractive is SA’s patent system which is simple, quick and affordable.

When it comes to patents, the Companies and Intellectual Property Commission (CIPC) is custodian of all applications that are filed in SA. SA’s highly cost-effective depository patent process makes it one of the cheapest in the world, somewhat 20 to 30 times cheaper than other patent regimes. Annual renewal fees in SA are also very low, especially when compared to those payable in foreign jurisdictions.

In addition, SA does not have a substantive patent examination system and CIPC does not investigate the novel or inventive merit of patent applications. Instead, CIPC assesses the formal requirements in order to ensure that all documentation filed is correct.  The nature of this formal examination patent process means that the responsibility for ensuring that patent applications filed in South Africa are valid reside with the applicant, and the involvement of a patent attorney from an early stage is therefore highly recommended.

Obtaining a granted SA patent is very quick and straightforward with acceptance of a SA patent application generally taking place 12 months from the filing of a SA national phase application or 18 months from filing a SA complete application.

There is no patent opposition in SA, and the validity of a patent can only be challenged post-grant by way of SA’s court system. The requirements for post-grant amendments, however, are more stringent than those requirements for pre-grant amendments.

In view of pre-grant amendments being relatively more simple that a post-grant amendment, it is common practice for an applicant to request that acceptance be delayed until a corresponding foreign patent, which has undergone substantive examination, has been granted and to amend the claims of the SA patent application by way of a pre-grant amendment to conform to those granted in respect of the corresponding foreign patent. By delaying acceptance and amending the patent claims to conform to corresponding granted claims, an applicant can ensure that their SA patent is granted with a valid set of patent claims in a cost effective and simple manner.

SA has a credible court system and specialized Patent Court. The court of first instance in patent litigation matters is the Court of the Commissioner of Patents, a specialist court that has the same authority as a single judge of the High Court. An appeal against a decision of the Court of the Commissioner of Patents or the High Court, can be made to the full bench of the High Court (a panel of three judges instead of one), or to the Supreme Court of Appeal, the highest court of appeal in all matters, except constitutional matters.

It is clear that the simplicity and affordability of obtaining enforceable patents, whether to operate in SA or as a gateway to the rest of the African continent, is a highly attractive option for foreign companies. And, having the right intellectual property experts on the ground with extensive African knowledge and experience is the final step to ensuring optimal realisation of intellectual property rights in Africa.