Patents are territorially limited, meaning that the applicant must apply for patent protection in every country that he/she is interested in commercialising his/her invention.
The South African patentee will usually start the patent process by filing a South African provisional patent application. The filing date of this application is known as the priority date of the application. After a period of 12 months from the filing date of the provisional application, the South African patentee generally has two routes by which patent rights may be obtained in other countries.
The first route is to apply for national phase patent applications in each country of interest. Normally such applications are filed before or at the expiry of the 12-month priority period provided by a provisional patent application in terms of the Paris Convention. In terms of this route, the patentee selects the countries in which he/she want protection and files a patent application per country. These countries are examining jurisdictions, meaning that examiners of the patent offices will consider the patentability (i.e. novelty, inventiveness and industrial applicability) of the invention. In South Africa, no such examination takes place hence the applicant tends to file ‘blind’, having no idea of the merit of the patent application, unless the patentee undertook novelty searches before filing the South African provisional patent application. The examiner of the chosen jurisdiction will thus examine the merit of the patent application and based thereupon decide to grant the patent in his/her country or to reject it.
The second route is to apply for a Patent Cooperation Treaty (PCT) application before or at the expiry of 12-months from the application of the South African provisional patent application. The application is filed at the World Intellectual Property Organisation (WIPO), located in Geneva, Switzerland. The PCT application reserves the patentee’s rights in 153 member countries for an additional 18 months from the filing date of the PCT application. The advantages of the PCT route is dual. Firstly, the PCT examiners will conduct a novelty and inventiveness search through some of the most comprehensive databases available and from that information compile a report. The report is known as the Search Report and Written Opinion and it provides the examiner’s opinion of the merits and patentability of the invention. Where the report is positive, meaning the examiner is of the opinion that the invention is patentable, the patentee will elect the countries out of the 153 member countries in which he/she wants to obtain patent rights upon the expiry of the 18-months from the PCT filing date. Secondly, should the report be negative (meaning that the examiner does not consider the invention to be patentable), then the wasted costs becomes limited. This is because the patentee did not file directly in each country, without having an idea of the merits of his/her invention as would be the case following the first route. The PCT search report is a handy tool indicating the probability of success in obtaining patents in various countries. The PCT also provides applicants of third world countries discounts of the filing fee, where the applicant is a natural person. Some receiving offices also provides a discount on the search fee for third-world applicants.
Should you be interested in extending your patent rights abroad, please contact us to discuss the best options for you.