The question of protecting patents, designs, trade marks and copyright in countries outside South Africa is a vast and complex one. Apart from a few regional groupings, each country requires a separate application for protection in respect of patents, designs and trade marks. Whilst there has been some harmonization of laws worldwide, there are still wide variations in even the basic concepts of what can be protected, and how it is to be protected.

This pamphlet, as a consequence, is intended to be a broad guide to what should be done to protect intellectual property in countries outside South Africa, and does not deal with specific countries. The information contained herein is largely directed to the protection of an invention by way of patent protection.

More information on protecting designs and trade marks in foreign countries will be provided on request.

International Conventions

South Africa is signatory to a number of conventions pertaining to intellectual property. The essence of these agreements is to give a person who has filed any sort of application in this country a right of priority in other countries.

What this means is that if an application is filed in another country within the specified period, the application in the foreign country is back-dated to the date of filing in this country.

The importance of this is that it is not necessary to file applications in overseas countries at the time that the protection procedure is being initiated by the filing of an application in this country.

The period of ante-dating allowed is one year in respect of a patent and six months in respect of a design or trade mark.

A few countries are not members of the International Conventions, examples of which are Namibia, Taiwan and some South American countries. If protection in Namibia or Taiwan is of importance then an application should be filed at the same time as the South African application, or before the product is commercially used or otherwise disclosed.

Apart from the two countries specifically referred to above, it is very unlikely that a South African applicant is likely to want protection in the few other countries which remain outside the International Conventions.

Patent Cooperation Treaty (PCT)

In terms of the International Convention, an applicant has a year within which to file applications in countries other than South Africa and take advantage of the ante-dating procedure.

However, in many instances this time period is found to be too short. In such circumstances the applicant can make use of the Patent Co-operation Treaty which gives him at least another eighteen months within which to file his national applications.

A PCT application is subjected to a search (in Chapter I proceedings) and to examination (in the optional Chapter II proceedings). The main advantage of a PCT application is that it extends the time period available for filing national applications. A subsidiary advantage is that a search is carried out before the cost of national applications is incurred.

South Africa is a member of the Patent Cooperation Treaty which means that PCT application can be filed at the South Africa Patent Office or at the International Bureau, which then attends to further processing of the application, including the International search to be placed in hand.     

Non-convention Filing

Even though the right to ante-date an application in a foreign country may not be available, or may no longer be available, it is sometimes still possible to file on a non-convention basis, that is, without any ante-dating claim. Whether or not a non-convention application can be filed depends on what disclosures have taken place, what patents have already been granted and on the law of the specific country.

A determination of whether or not such non-convention applications can be filed has to be on a country-by-country basis.

Advice on Protection

As soon as the countries in which protection is required are known, we should be given a list. We can then advise on procedures in the countries concerned, on whether a PCT application is a viable option, and on costs both on filing and subsequent to filing.

Searching

A foreign patenting program is expensive and initial filing costs of R10,000 upwards per country will be incurred. These costs may be doubled by post filing procedures.

To give an indication as to the novelty and patentability of the invention a search should be carried out. What a search does is reveal the most relevant published patent specifications which must be considered before foreign patent applications are filed. If the invention is shown to be known, the proposed patenting program can be cancelled. Filing in circumstances where the inventor has no knowledge of what has been published is a high risk procedure.

The entire cost of the foreign patenting program will be lost if a search by an examining authority reveals a prior disclosure of the same invention. The fact that a search fails to reveal relevant prior art cannot be taken as a guarantee that the invention is patentable. This is because only classified material, meaning patent specifications, can be searched within a reasonable budget, whereas everything that is known must be taken into consideration in determining patentability.

Post-Filing Procedure

Most countries examine patent applications before allowing the application to proceed to grant. In some countries the application is examined only to ensure compliance with formalities. In other countries the application is examined to determine whether the invention claimed is new and also inventive when the state of the art is taken into consideration. In such countries, objections to grant are almost certain to arise and will have to be dealt with by argument and/or amendment of the claims in the patent specification.

Most countries have broadly based novelty laws and any publication or use anywhere in the world, and not only in the county in question, will result in the Patent Office refusing to grant a patent.

Issue fees are payable on grant in a number of countries and in addition some countries require the payment of annual fees to maintain an application in force. These costs can, in the period of three or four years following filing, total up to the same order of magnitude as the initial filing charge.

Obtaining foreign patents, designs and trade marks is expensive and we suggest that your proposed program be discussed in detail with us as soon as possible after the basic South African application is filed.