Study Unit 3.

2
Patent protection and Specification
1. Procedure for obtaining a SA patent
2. Effect and term of a patent
3. Provisional patent specification
4. Complete patent specification
5. Patent protection across international borders

Procedure for obtaining a SA patent

The inventor and the applicant
§ Person entitled to protection for invention = inventor
§ When inventors lodge patent applications they are also the applicants
§ Disputes between inventors and applicants are referred to the commissioner of patents
§ Inventions based on indigenous biological resources – applicants must furnish proof of their
authority to make use of such resource when lodging an application = S30(3A) & (3B) of
the Patents Act
§ Inventions resulting from publicly financed research = belong to the person who undertook
the research with the use of public funding – S4(1) of the IP Rights from Publicly
Financed Research and Development Act
§ Should the inventor not be interested in ownership of an invention resulting from public
financing = state can consider taking over the ownership
§ Rights to an invention can be assigned
§ If there is more than one inventor = the inventor not cited in the application can assign their
right to co-inventors
§ It is possible to assign these right to a non-inventor
§ Inventors = natural persons
§ Applicants = can either be natural or juristic persons
§ The rights of the applicants are dealt with i.t.o contracts
§ If there is no contract = co-applicants have equal undivided shares in a patent application
§ Their co-operation is required in that none of them can without consent of other applicants
deal in any way with the application
§ UNLESS = the application is in danger is becoming abandoned
§ Disputes between co-applicants can be referred to the commissioner of patents
The application procedure
1. Provisional applications
§ Applications begin with the filing of a provisional patent application
§ Applicant’s themselves can prepare and lodge the application or obtain professional
assistance
§ Once lodged = the invention can be freely disclosed
§ To obtain patent rights = applicant must follow the provisional application with the lodging of
complete patent application
§ If not done within set time limit = provisional application lapses
§ The period between the filing of the provisional and complete applications is useful for
testing the invention and assessing its market value = conducting of novelty searches etc.
2. Complete applications
§ The application must be accompanied by the particulars of earlier applications
§ The patents act requires that the complete application be signed by an agent or a patent
attorney = S9(b) of Patent Act
§ Implication = the complete application must be professionally lodged
§ A completed application can be lodged as a first application or after a prior application
§ When lodged as first application = disclosure of the invention before the date of filing =
destroys the inventions novelty
3. The priority date and claiming priority
§ The date of the lodging of the first application in pursuit of patent protection for an invention
is called the priority date = S33(1) of Patent Act
§ The priority date of a complete application filed in the first instance is often preceded by
another application by the same applicant
§ When it is so preceded – the complete application claims priority from earlies applications
§ Such complete application claiming priority must be lodged within 12 months of the
application from which priority is claimed
§ A SA complete application can also claim priority from a foreign application
§ The SA application must be lodged within 12 months of the filing date of the foreign
application
§ The invention claimed in a complete application can validly claim priority from one or more
earlier applications only when it is fairly based on the matter disclosed in the application
from which priority is claimed
§ Fairly based implies that each of the integers of a relevant claim must fid a counterpart in
an element in the priority document
§ While no new matter can be introduced into a complete specification by way of an
amendment = it can be supplemented by a supplementary disclosure
§ The priority date of a supplementary disclosure is the date on which it amends the complete
specification
§ The introduction of a supplementary disclosure will have the effect of causing a complete
application
4. Examination, acceptance, inspection, publication and grant
§ A patent application is examined only for formalities and not for substance
§ Once all formalities have been met – the complete application is accepted by the registrar
§ An application must be accepted within 18 months of the date of its being lodged – if not it
will lapse
§ The applicant is notified by way of a notice of the acceptance of the application and must
arrange for such notice to be published in the SA patent journal
§ As soon after the advertisement = the registrar must grant the applicant a patent
§ The granting of the patent is deemed to be effective from the date of the advertisement
§ Patent documentation relating to an application that claims priority from another SA
application – becomes open for public inspection on the date of the publication
§ An application claiming priority from a foreign application – becomes open for inspection 18
months after the filing of the first application from which priority is claimed
§ Documentation relating to an application claiming priority from another SA application is not
available for inspection before acceptance of the application is published in the patent
journal
§ The Act provides for a period of 9 months during which no steps can be taken in relation to
infringement of a patent deemed to have been granted on the date on which its acceptance
was published
§ This gives 3rd parties an opportunity to ask for revocation of the patent on a relevant ground
without becoming exposed to an infringement action
Effect and term of a patent
v The right ensuing from a patent includes the right to exclude other persons from making,
using, exercising or importing the invention
v In essence – the right is an exclusively granted positive right
v Purchasers of a patented article may use the article and dispose of it or offer to dispose of it
v A patent can be enforceable for a term of up to twenty years from the date of the filing of the
complete application

Provisional patent specification

∞ Only requirement = the specifications must commence with a title that indicates the subject
matter of the invention and must fairly describe the invention that they deal with
∞ Fairness – the description must be adequate to enable a person with ordinary skill to
understand the gist of the invention
∞ If the specification is intended for use as a priority document for an international application
= the description is done by way of an enabling disclosure
∞ The provisional specification needs to contain only a proper description of the invention
∞ It is useful to include the invention’s field of application

Complete patent specification

It is a document that progresses through to the granting of a patent

It must include a description that must enable another person reasonably skilled to
understand the invention
THUS – it must include an enabling disclosure
The title

The title forms part of the description and must be a functionally descriptive character to
enable readers of the application
The title is often taken from the detailed description of the invention
The introduction (field of the invention)

Taken from the broad description and claims

Prior art

The disclosure of prior art is not a requirement

BUT – it is often included for its usefulness in identifying the novel and inventive features of
the invention as described in the specific description
The object of the invention

This addresses a technical problem

The description of the problem and the intention to address it by way of the invention
disclosed in the patent are dealt with in a separate section called the object clause
It is not necessary to include an object clause in the specification
Broad description (summary of the invention)

The claims are mirrored in the introductory text by way of a broad description
 With the broad description forming part of the description of the invention = all features of
the claim will be disclosed in the combination of broad and specific descriptions

Specific description

Sets out the details of an invention

It begins by tying the features of the invention as defined in the claims to the elements of an
invention as disclosed in the specific description
This ensures that the claims are based on the specific description
When an invention is a product and has to do with subject matters such as equipment – the
description will refer to drawings or diagrams that form part of the patent specification
The specific description will detail the product and set out its method of operation and use
When an invention related to a substance-type product = the formulae for that structure are
normally included in the description
In the case of a process -type invention – the specific description need not include any
reference to equipment but is must still be enabling in detailing the various steps of the
method
It is useful to include a description of the advantages of the invention
The claims

Function of a claim = to define the extent of the protection afforded under a patent
It is used to inform rivals of the limits of the field denied to them while the patent is valid
A claim defined the monopoly with a patentee being required to clearly set out the invention
intended for protection
The protection extends beyond the invention as disclosed
A variations of the invention are entitled to protection
The claim as “defining an invention” must deal with the inventive concept underlying the
disclosed invention
The objective of the invention is deduced from consideration of the distinguishing feature
The essential feature of the invention are often generically defined
THUS – the claim prepared must be clear
The disclosure of a specific description being fairly based implies that each if the integers of
the claim must find a counterpart in an element in the description
THUS – generically embracing the invention as disclosed in the description
The drawings and the abstract

The requirements for drawings or diagrams are specified in the patent regulations
Drawings that are integrally linked to the specific description = accepted as forming part of a
patent specification

Patent protection across international border

The Paris Convention

• It grants various rights including reciprocity rights between member States

 • A grace period of 12 months is granted for filing a patent application in another country that
is a member of the Convention without a loss of priority rights
• Application is called a convention application
• Means = when a South African applicant lodges a foreign convention application within the
grace period = the original South African filing date that establishes the priority date of the
application is also the priority date of the foreign application.
• The foreign application is thus deemed to have been lodged at the priority date.
• The practical effect of the reciprocity rights under the Paris Convention is that any
disclosure of the subject matter of an application after the priority date = will not affect its
patentability in a country in which a convention application is filed.
• Foreign applications with South African provisional-application priority dates are normally
filed on completion of the South African applications
TRIPs Agreement

• The members of the WTO) concluded the TRIPs Agreement to promote the protection and
enforcement of intellectual property rights as a vehicle for promoting technological
innovation
• The administration of TRIPs is managed by the World Intellectual Property Organisation
(WIPO)
• TRIPs Agreement specifies the minimum requirements for patentable subject matter and
possible exclusions.
• The South African Patents Act meets these requirements by granting protection for
inventions that are new, involve an inventive step and are capable of industrial application.
• The exclusions from patentability under the Act are also in accordance with the TRIPs
Agreement
The Patent Cooperation Treaty

• The Paris Convention provides a grace period of 12 months from the priority date for the
filing abroad of applications
• But when the convention year is on the verge of lapsing the Paris Convention obliges an
applicant to lodge the relevant foreign applications
• It is often not enough time when an applicant is developing an invention and assessing its
validity and to decide in which jurisdictions protection should be pursued
• To accommodate applicants by making more time available, the Patent Cooperation Treaty
provides for a single international filing procedure giving applicants a period of up to 30
months from the priority date to decide on the above issues
• The PCT procedure makes a further possibility available –
• Instead of filing a South African provisional or complete application, a priority date can be
established by filing an international application under the PCT, whether at the South
African patent office or directly at the International Bureau in Geneva
• I.T.O the Paris Convention a subsequent PCT application must be lodged within 12 months
of the South African priority date.
• The PCT application procedure makes provision for the selection of countries from all of the
PCT’s member States
• Regardless of how it is dealt with, an international application under the PCT is divided into
an international phase and a national phase
 • During the international phase an application is processed by way of a procedure
involving certain actions within set timelines
• This process includes a comprehensive search report from an international searching
authority, which is received by the applicant about 16 months after the priority date
• The search report is followed by international publication in a weekly publication, the PCT
Gazette
• This publication takes place about 18 months after the priority date.
• As a result of this publication = the invention and the search report officially become
available for public inspection
• If the applicant so chooses, he or she can request an international preliminary examination.
• This is done by the searching authority that conducted the international search
• This examination is preliminary because further examinations are performed in examining
jurisdictions during the national phase of the PCT
• Having completed a PCT filing an applicant must within 30 months of the priority date of an
application proceed with filing national applications
• During this phase the international application is transferred to the countries and regions
selected for national processing.
• during each national phase proceeds independently according to the patent-processing
procedure of each jurisdiction
Other international instruments

• Provision is made in terms of the Budapest Treaty on the International Recognition of the
Deposit of Micro-Organisms for the Purposes of Patent Procedures
• The basis of this Treaty is that micro-organisms are often difficult to describe and can
mutate thereby causing uncertainty about the patented subject matter.
• International depositing institutions are identified in terms of the Budapest Treaty, at which
institutions samples of patented microbiological organisms are held to preserve the
structures of such organisms for legal purposes.
• While South Africa cannot be a member country of the European Patent Convention (EPC)
familiarity with this Convention is useful because European patent applications claiming
South African