Erik van der Vyver (Von Seidels) – South Africa

My name is Erik van der Vyver. I’m going to give you a brief introduction essentially on South African patent law. Contrary to popular belief, over and above having fair and equal elections, and hosting major sporting events, we
also protect Intellectual Property.

So South Africa is in with the PCT. We have got a 31 month filing deadline, although a 3 month extension is available as of right, and you can apply for the extension at the same time of applying for the patent. So, it’s not necessary to actually do anything up-front.

There are no excess fees payable, so number of claims, number of pages doesn’t matter. The major reason for it is that the Patent Office will not read the Specification, so they really don’t care how much you put in there.

Because, similar to Singapore, South Africa is a non-examining jurisdiction. I notice that Singapore refers to it as a self- examining jurisdiction, which I think is actually quite a nice description, because that is essentially what it does. It places the onus on the applicant to make sure that the application that is before the patent office is in as
patentable format as possible. There are various procedures that allow for this to take place. One of them is that amendments are relatively easy to do, and they can be made at any stage during the life of the patent. Before the
acceptance of the patent, you can even make broadening amendments to the claims. After acceptance and after publication, you can still make any amendments, as long as they fall within the scopes of the claims as originally
filed. The amendments obviously do pose additional costs. They are normally non-exorbitant; they are very minimal, particularly because the amendments would normally have been made in foreign/other jurisdictions, so it’s normally just a case of bringing the South African claims in line with the examined claims in the other jurisdictions.

Acceleration can be very affective in South  Africa. There’s a very quick procedure. It’s basically possible because they don’t get examined, so if you want your application granted very quickly, it’s quite easy to do so, as long as you
fulfil the formal requirements – so long as your declarations and all the rest have been filed, you can have your application accepted within a question of months (one, two, or three, is usually the benchmark). After that it will be
published. Within a further two months, you can have a granted patent, as quickly as four to five months after you file the application. If you’re very confident of your patent application, or your patent specification and the
patentability thereof, it therefore makes it a nice vehicle if you want to test your patent, or if you actually want to test the strength of the patent in South Africa via the litigation. If there is infringement, you can enforce it very quickly, and the patentability of the patent will normally then be looked at during the investigation of the infringement proceedings as well. So, it can be a very quick procedure, and quite effective, and quite cost effective, as the cost for litigation in South Africa is substantially less than a few other jurisdictions.

It is normally suggested that you slow the acceptance process down. This is quite a simple procedure. You just apply for the delaying of the acceptance of the application. The major reason for it being to allow you sufficient time to have your examined patents in your other jurisdictions to proceed to grant, so you can see what amendments need to be made to the claims to also affect them in South Africa. You have an automatic 18 month extension as of right, then a further 3 month extension, and then any other extension can be granted on good cause shown to the patent office, or to the registrar. Good cause includes awaiting the outcome of a prosecution of a corresponding application examining jurisdiction with a view to making amendments. It is very important to note that a failure to bring the South African patent into line, into a patentable format, can be very detrimental to you a later stage. There was a recent decision – well, recent, about a year or two ago – where the court held that the applicant – there was a culpable delay in bringing the South African application in line with the foreign examined applications, and as a result the courts refused the patentee the right to enforce the patent at all. So, it is a crucial thing to keep in mind.

Luckily, it’s not only your job; it’s my job as a South African attorney to remind you that you have to actually bring the South African patent application in line, and we will do that by monitoring your foreign applications as well.

South African patent law is based a very large extent on UK law, so we tend to follow the UK quite closely. Our courts have not made any rulings on the patentability of software, although we expect to go very much a similar route as the UK.

Business methods – although you will get a patent for it, they will not be enforceable – they are not considered to be patentable. It’s interesting, I actually saw a patent the other day in the patent journal, for a hamburger, and I don’t know who filed it, but obviously it went through because it wasn’t examined. We found the invention and suggested that they also file it in the States – they might make some money of that.

There are no formal disclosure requirements. As I said, the most important thing is that the applicant is expected to remedy the defects and claims based on its foreign prosecution – and I’ve already mentioned that.

Relevant markets for South Africa – Obviously mining is a very big industry. The communications and IT. especially wireless communications. There is a massive explosion in wireless communication in Southern Africa, as well as the rest of Africa, and it’s definitely a very lucrative market to enter at the moment. It’s probably evidenced by the fact that one of our local cell-phone manufacturers (or cell-phone service providers) has currently become the sponsor of Manchester United, so they must be doing well. There is also a low-cost banking explosion, especially from the cell-phone side and cell-phone banking, so that’s a very active industry. Then obviously healthcare, bio-medical devices, medical devices, banking, agriculture; and, very importantly South Africa is seen at the moment as the gateway into sub-Saharan Africa, and also the rest of Africa.

So, our firm deals with patent and trademark applications throughout the whole of Africa. It can be notoriously difficult to deal with a few of the African countries, and we’ve set up a network which allows us to do that within reason, and I think the most important thing is before you file in Africa, or anywhere throughout Africa, just take advice from someone who knows the landscape a bit better. There are certain countries that you should definitely file, and some which are notoriously difficult to actually get your protection, and to enforce your protection.

Boo Yee Swan (Lee & Lee) – Singapore

Hi everyone, I’m Boo Yee Swan from the law firm Lee & Lee in Singapore. Lee & Lee is a full-service law firm, and we do have an IP department which is a medium-sized practice.

I’ll just talk about National Phase entries today, inSingapore.

The deadline is 30 months, and we have one extension which can be granted automatically for a period of up to 3 months. So you can choose to elect whether it’s one month, two months, or three months, but there is only
one extension which is automatic. So, you need to know exactly how many months you want to enter. A second extension or subsequent extensions are possible, but these will have to be lodged together with statutory declarations to setting out the grounds on why the extensions are required. For the first extension, extension fees are Singapore $200 per month requested. That works out to be about US $167 per month. The exchange rate now is about US $1 toSingapore $1.2.

Excess fees – When we are paying grant fees for up to 25 claims, it is Singapore $200, and for claims above 25, you will have to pay extra fees of $20 per claim.

Let me just talk a bit about the Singapore patent system and a few unique features of our system to give you some background, before we proceed. The Singapore system is slightly different from other jurisdictions. It is relatively new because our Patents Act only came into force in 1995.  The government thus aims to avail applicants of more options to obtain grant in addition to the normal route of requesting search and examination. So you’ll
see later on as we go through the presentation that there are various routes to grant which applicants can actually choose.

It is also quite easy to obtain grant in Singapore. As long as the applicant actually elects a route to grant by the prescribed deadline, pays the grant fees, files the proper documentation, the Registrar will just grant the patent,
regardless of whether your examination report is favourable, or whether it actually contains matters waiting to be resolved, or it is negative. Once you actually elect a route to grant and pay the grant fees, the Registry will just
issue the grant. This is because the Singapore patent system is a self-examining one, therefore it places the onus of obtaining the best possible patent protection on the applicant. Hence, if you do not actually amend your
patent application or ensure that it’s properly worded, then the patent could then be subject to revocation post grant. For your information, in Singapore, we do not have any pre-grant opposition proceedings available.

The other unique feature about the Singapore patent system is that we have a 2-track system of obtaining grant. There is a fast track and a slow track. People may think that by choosing the slow track you are actually slowing down the patent application process, but that is really not the case. Choosing the slow track simply gives you a bit more time to consider your options before you elect a route to grant. So, for example, if you feel at that point in time, maybe immediately after entering National Phase, that you already have the proper documentation to elect a certain route to grant and you proceed to pay the grant fees, then even though you have actually selected the slow track, your patent application will still be processed by the Registry quite soon after, and you will then obtain a
certificate of grant. Hence, the slow track basically just gives you more time to consider options.

Let’s talk about the fast track first and the routes to grant which are under the fast track. By default, a Singapore
application will proceed via the fast track. So if you don’t take any particular action, then it will just proceed by the fast track. Under the fast track, the applicant must elect a route to grant by 42 months from the priority date. What are these routes to grant? There are two under the fast track. One is that you can elect to file a Notice of Intention to rely on the International Preliminary Report on Patentability (IPRP). This is quite a popular route which is chosen by many applicants. It’s usually chosen if the applicant wishes to secure grant based on claims which have been examined and referred to in the IPRP. No official fees are payable for this route.

The second route is to rely on the acceptance or grant of a corresponding application, what we refer to as filing “prescribed information relating to a corresponding application”. For this route, there are also no official fees
payable. The applicant usually chooses this route if he wishes to secure grant based on claims which have been examined and referred to in the corresponding application.

What then would you consider to be a “corresponding application”? Under our Act, a “corresponding application” is one which is filed with one of the following patent offices: U.K., U.S.A., Australia, New Zealand, Japan, Korea,
as well as Canada (but only those filed in English), and the EPO (but also only those filed in English).

What do we mean by “prescribed information”? The applicant must file a certified copy of the patent grant of the corresponding application that you’re relying on, or if it’s not been granted yet, then other documents which set out the final results of search and examination as to substance of that corresponding application, plus a copy of the patent claims referred to in the final results. (If these are not in English, then we need to lodge verified English
translations). We will also need to file the IPC symbols which have been allocated to the application, or, if they have not yet been allocated, then the IPC symbols which, in the applicant’s opinion, should be allocated.

Let’s go on to the slow track. To transfer to the slow track, the applicant must file a request for block extensions of time by the deadline of 39 months from the priority date. This deadline is quite important because it’s non-extendible. No official fees are payable. However, you have to distinguish this from the Convention national applications – no official fees are payable only for PCT national phase entries, not for national applications filed under the Paris Convention. If it’s a regular Convention national application in Singapore, then the official fees for transferring to the slow track can be quite hefty (which is $1800 right now). Once you’ve transferred the application to the slow track, the deadline for electing a route to grant would be extended to 60 months from the priority date. For applicants who have chosen to rely on a corresponding application, transferring to the slow track may be quite useful, because sometimes you may not get grant of your corresponding application by 42 months. So, if you do not transfer to the slow track and you face a deadline of 42 months, and if you do not obtain grant of your corresponding application by then and you do not want to rely on the IPRP, then you will have to start paying extension fees from the 42^nd month. So, transferring to the slow track gives applicants the option of buying more time while you await the results of your corresponding applications. Some applicants may have filed corresponding applications in the USA., or UK, EPO, for example, and we have had the experience that many times, some of
these applications do not proceed to grant by 42 months, and we are not able to rely on them by the 42–month deadline.

So, we always encourage our clients to elect the slow track, because you really have nothing to lose – no official fees payable, and it gives you more time; and if it happens that your corresponding application is allowed well before
the prescribed deadline, you can still go ahead and elect a route to grant, file the proper documentation, pay the grant fees, and the Registry will just process your application ASAP.

For the routes to grant under the slow track, apart from relying on the IPRP, or a corresponding application, you have one more choice which is to request search and examination; or to request examination plus a copy of your International Search Report; or you can request examination plus a copy of the Search Report of your corresponding application, if your corresponding application has not yet proceeded to grant. This must however be filed by the 39^th month, so together with the transfer to the slow track, we will have to file the request for search and examination, or the request for examination.

In Singapore, software and business methods are not excluded matter from being patentable, so as long as your invention is able to fulfil the requirements of patentability – of novelty, non-obviousness, and industrial applicability – then a patent can be granted.

We have no disclosure requirements.

I can’t think of any particular industry that we are really relevant for, so I guess all products.

Israel Jimenez (Alvarez Delucio) – Mexico

Well, I’m going to talk about Mexican practice.

Kind of patents you can protect in Mexico is 2 ways – regular ways of the Paris Convention, and the other way we have PCT, National Phase – Phase 1, National Phase – Phase 2.

Deadlines –
The deadlines on the Paris Convention, we have 12 months, and for PCT we have 3 months. No more months, no more extensions. It’s important for you. Mexico also has a lot of ways to protect when your clients or your inventors disclose without any protection.  Mexico allows 12 months after disclosure.

Excess fees –
This is good news for you. No official fees are paid for excess pages in description or excess of claims.

Acceleration -
As I made you aware, according to our practice we can submit a copy of a corresponding granted patent, and also we can submit documents related of technical examination report. Such documents can be submitted during the
prosecution, likewise to accelerate the prosecution of these patent applications, Mexico takes advantage of having a neighbour in the U.S. For this reason, Mexico is part of the Pilot Program of the PPH process from March 1^st this year, and as you know, we have a very, very short time, but this maybe is a new way to accelerate all the patent applications in the future.

Publications –
After satisfying the formal requirements the patent application is published in the official gazette. It’s important to note that no examination report is necessary.

What is good news for you is that the examination fees are included in the final fees.

Pharmaceutical Products – In my opinion, this is a hot topic for Mexico, because these kind patents have some difficulties to be granted, but it’s important to inform you  that Mexico allows inventions of pharmaceutical products direct to the second use but they need to adopt the Swiss Style claims.

The one new hot topic in Mexico, concerns the Patent Applications direct to the Regime Dosage. In this respect
we had some meetings with Mexican authorities to discuss this topic but until now such Patent Applications are in discussion.

Software and Business Methods – Well, this is another hot topic, as in other countries. As you know, the software can be protected as copyright, but in Mexico the Patent Application which involves software can be patented. But just In case of such Applications, if there is a technical contribution to the prior art, this
is the only way you can get a patent. An example for this kind of patent can be a computer controller process which moves a robot arm, etc., but until now we had some meetings with the Mexican authorities in order to determine what happened with these applications, and we are working to establish the guidelines for this matter.

In connection with the Business Methods, there are a lot of patents trying to protect them, but until not in Mexico,
they are not patentable.

Disclosure requirements – Well, it’s important to point it out that Mexican Examiners are requiring us to submit relevant documents in order to demonstrate the novelty and inventive step of the invention. Such documents can be submitted in the English language. An example of this is that the Mexican examiners require us to file the translation of Russian or Chinese documents, because it’s impossible to understand them.

Third party observation – this is the last amendment in our IP Mexican Law: “A third party can submit some
information to demonstrate a lack of novelty and inventive step of the patent applications. Between the 6 months after this application has been published in the Official Gazette.

Brian Goldberg (E|K|M Patent & Trademarks) – Australia

My name is Brian Goldberg. I’m from EKM Patent & Trademarks inAustralia.

I’ll read my slides, just because I know then that definitely sticks to the time limit and Kimberley will invite me
back next time.

I thought I’d start with something that might be slightly different, and then go through the other scope of the patent aspects that we’re looking at, and, that’s an innovation patent. In Australia we have something known as an ‘innovation patent’ and it’s intended to provide IP rights for those incremental- and lower-level inventions that would not sufficiently be inventive to qualify for a standard patent. So, it’s got a lower threshold than a normal inventive, so all you need is an innovative step.

Some benefits are:

• that from an enforcement perspective, once you have it certified, it’s a process as well that automatically gets granted, and then you need an examination for certification.

• Once it’s certified, it’s legally enforceable – and that’s probably its strongest benefit.
• You can still convert it back to a standard patent, but there’s a quick time-limit of a month before this one will be granted.
• It’s fast, because you instantly get a granted innovation patent.
• And, because of the lower-threshold, it’s actually harder to invalidate, so you can be in a strong position to
  enforce it.

Some further benefits:

• If examined and certified, the innovation patent offers the same level of protection. And, in Australia, there’s not that many infringement matters in the patent area, due to the cost in other areas and the time taken. But, this is certainly an avenue that patent holders are looking at to enforce their rights.
• It’s cost-effective both from a filing point of view, as well as knowing that you’re going to get it certified and
  granted. It means you can put the budget in place, or your clients can put the budget in place to do the enforcement quite confidently.

However there are limits. The limits are:

• It’s Australia only.
• It’s 8 years. You only get the rights for 8 years, not 20.
• There’s only 5 claims allowable in an innovation patent. So you’d have to think through the 5 most relevant
  claims.
• And as I said, initially it was probably taken not so quickly, but now it’s certainly being used in the IP portfolio management of companies inAustralia.

So, moving to the normal one. The deadline in Australia is 31 months from the earliest priority claim. And just to make a note, there’s no Power of Attorney or Authorisation Agent required for National Phase or Convention applications.

Extensions –
So as long as you don’t unintentionally miss doing something or paying the fee, you can apply for an extension under Section 223 of the Patents Act. So probably the only thing you could do to muck this up is send us an email saying ‘Our client does not intend to proceed’ and then a month letter get an email ‘Oh, by the way, he’s changed his mind; he wants to proceed’. So, if you don’t do that it’s usually okay. The 2 main reasons are an error or omission by
yourself, an employee, an agent or attorney, or circumstances beyond your control – delays in post, courier, sickness, accident – and that’s not a definitive list, so we could add into there. However, it doesn’t cover for lack
of funds to pay excessive fees. So, if the client didn’t continue because of fees at the time, that’s not a strong enough reason. And the applications for an extension of more than 3 months are advertised by the patent office.

In terms of patent fee increases – on the 29^th June the government approved increases in patent fees, which came into affect on 1^st August. The total patent revenue for the financial year had increased by 6.8%, so that’s a small indication for us. Though, probably what’s important from a day to day basis if you are dealing with Australia
is that our dollar has actually increased. Now, for the first time in my life, (so closer to 40 years) it’s above parity with the U.S. dollar (and I haven’t checked today, but it was $1.07 when we left, which is very unusual – 10 years
ago it was 50 cents to U.S. dollar, then it lingered about the 60, 70, and now it would be above parity).  So the firms,
including us, we all haven’t worked out where we’re going to hedge our bets, but that has increased the costs, and something to note for a daily basis.

Acceleration – Presently it’s taking about 3 years to get an examination report. In fact, what IP Australia, the governing body in Australia have done, probably quite at the forefront of patent examination, is that they’ve set up a
patent factory outside the patent office in a capital city, just across the road from us actually in Melbourne, and they’ve just got patent examiners sitting there in a factory environment churning out patent examinations. So, they’re very well set up for patent examinations and to attract those people they need to relocate to the main cities. And, the main reason that you’d want to accelerate, or that’s accepted are either, possible infringement reasons that you’d like to enforce you rights, as well as commercial reasons, such as, entering into license agreements, because in
Australia we understand that there’s bigger markets internationally. So, that’s a good reason to have your patent accelerated, and then it takes about 10-15 weeks, which is quite reasonable, and, as I said, they’re set up quite well to do that.

We also have green technology, so if you want your patent application to be examined more quickly, and it falls into a green technology, there is an avenue. I don’t think any emails required. I think you just write ‘green technology’ and you get that opportunity.

And, as well we’ve entered with the US into the patent prosecution highway programme. I’ll just read out the
main aspects that need to confide to, to go along that path. The Australian claims must be sufficiently correspond with one or more of the claims of the allowable claims in the US application. And, it must be linked to a common US priority claim, or have a common initial filing date. The Australian application must not have already been examined by the Australian Patent Office. So, nothing too different there, and we’re part of that.

I’ll say very quickly, in terms of software and business methods. The answer is yes.

Yes to software – a mode or manner of achieving an end result of what we term ‘artificially created’. A lot of flowcharts in the patent applications; and, very popular at the moment in Australia.

I’ve got to admit, being a smaller market, it’s popular in the sense that they would like a big US firm to say ‘We need that exact application’, rather than do it themselves in Australia. So they do look to protect the patent as the only form of asset in Australia, and then seek a license deal. So it is very popular to see a lot of drafted I.T. or
software patent applications, as well as business methods – the answer is yes.

There is a slight differentiation with the business method. We’d like a technical solution or a technical advantage, but once again, artificially created gets you in the scope of justification.

Disclosure requirements – well, there’s been a removal of the obligation to lodge search results. So, it’s now relatively straight forward and the onus has been taken away.

And my final slide, what’s the relevance of the Australian market? – Well, we are diverse, and we do have various aspects:

• Certainly medical devices rate high -
  we have a high level of medical expertise.
• Hardware electricals.
• Software and business methods, but
  for that reason, more than being and end market.
• Mining is certainly a boom at the
  moment that’s running our whole economy, but is dominated by some larger
  players, and quite controlled in Australia.
• Household goods
• Sports – definitely in the sports area.
• Transport
• Chemical biotechnology  and,
• Pharmaceutical

So we do cover a wide range and in fact our clients also cover that aspect, so it is a broad area.

So thank you very much.