Circular No. 361: Amendments to the South African Patents Act
The South African Patents Act No. 57 of 1978 has recently been amended by the Patents Amendment Act No. 58 of 2002, which was assented to by the State President on 30 December 2002 and published in Government Gazette on 15 January 2003.
An explanation of the substantive changes made by the amendment is provided below:
International (PCT) Applications: Deadline For Entering The National Phase In South Africa
In South Africa the Chapter I deadline for entering the National Phase is currently 21 months from the earliest priority date of the International Patent Application, while for Chapter II applications the corresponding deadline is 31 months. The South African Patents Act has been amended to provide that the aforementioned deadlines can be extended before or after the expiry thereof, for a further period not exceeding 3 months. Thus, in South Africa, the Chapter I deadline on extension is 24 months and the Chapter II deadline on extension is 34 months.
Our authorities are considering an amendment to our Patent Regulations whereby the Chapter I deadline will be changed from 21 to 31 months from the priority date. These Regulations have not yet been published and our authorities are not yet able to tell us when they will be published.
Notwithstanding this situation, section 43F(2) of our Patents Act provides that, when processing an International Patent Application, the Patent Cooperation Treaty and Regulations will prevail in the event of a conflict with the South African Patents Act. In the light of the recent amendment of PCT Article 22, it is thus arguable that PCT Article 22(1) will prevail and that the Chapter I deadline in South Africa is, in fact, 30 months from the priority date. Unfortunately our authorities advised the International Bureau that our law was not compliant with the PCT amendments.
In order to avoid procedural complications, we therefore recommend that Chapter I National Phase Applications be filed in South Africa within the 21 month period (or at the latest within the 24 month extension period). If the 24-month deadline has been missed, we still recommend that the Chapter I National Phase Application be filed within 30 months of the priority date, under section 43F(2) of the Patents Act.
We will keep you informed of developments and will let you know when our Patent Regulations are amended.
A new Section 69A has been inserted into the Patents Act detailing certain acts of non-infringement. Specifically, the Section provides that it shall not be an act of infringement of a patent to make, use, exercise, offer to dispose of, dispose of, or import a patented invention on a non-commercial scale and solely for the purposes reasonably related to obtaining, development and submission of information required under any law that regulates the manufacture, production, distribution, use or sale of any product.
However, it is not permitted to possess the patented invention for any purposes other than for obtaining, development, or submission of information as contemplated in the section.
The main import of this Section is that it is now permissible for a generic manufacturer of pharmaceutical, veterinary or agricultural products to obtain registration of generic equivalents of patented products with the registration authorities in South Africa, prior to the expiration of the relevant patent.
It is however to be noted that the only actions which are permitted are those relating to obtaining the information necessary for registration and with registration itself. It is not permitted, for example, for a generic manufacturer to stockpile a product prior to the expiry date of the relevant patent with a view to commercial sales immediately the patent expires.
We also point out that although our Patents Act now includes these "Bolar Provisions", no provision has been made for the extension of term of protection for patents covering pharmaceutical, veterinary or agricultural products, for example by way of supplementary protection certificates.
Sufficiency of Disclosure
Prior to amendment, Section 32 of the South African Patents Act provided that a complete specification shall "fully describe, ascertain, and where necessary, illustrate or exemplify the invention and the manner in which it is to be performed". Section 32 of the South African Patents Act has been amended so that now a complete patent specification must "sufficiently describe, ascertain and where necessary, illustrate or exemplify the invention in the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such invention".
In addition, the requirement for disclosure of "the best method" has been removed. In other words, it is no longer necessary to disclose the best method of performing the invention known to the applicant at the time when the specification is lodged at the Patent Office.
The Section of the Patents Act dealing with revocation of South African patents has been amended consequentially.
Applications for Amendment
Section 43F of the South African Patents Act has been amended to provide that it is no longer necessary to advertise an application to amend a National Phase Patent Application after acceptance of the application. The provisions relating to National Phase Patent Applications are now the same as normal Convention applications in South Africa and it is only necessary to advertise an application to amend after grant.
If you require any further information on any aspect of the Patents Amendment Act, please contact us. A copy of the Patent Amendment Act can be downloaded from our website www.spoor.com by viewing the current news article "New amendments to the Patents Act".
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Spoor & Fisher