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.