Adams Patent

8/6/2019 Adams Patent

1/8

1

November 2002

Patents, Utility Models and Registered Designs

Protection in Countries other thanThe Republic of South Africa

Protection for new technology can be obtained in other countries by means of a patent, utility model and/or a registered design. A patentprovides protection for an invention, a registered design provides protection for the appearance of an article, and a utility model provides

protection that is somewhere between that of a patent and a registered design. This pamphlet deals primarily with patents; however, sections2 and 3 deal briefly with utility models and designs respectively.

1. Patents

1.1 Patent protection is obtained in most countriesby the filing of a patent application accompanied by acomplete specification. In some countries it is possible tofile a provisional specification and in other countries it ispossible to extend a patent granted in another country tothat country.

1.2 As with South Africa, all other countries require thatan invention must be "new" and "inventive" in order to bepatentable. Each country has its own definitions andstandards in regard to these requirements, some more strictand others less so than South Africa. The requirement ofnovelty is of prime importance as one's own actions indisclosing and/or using the invention could have the resultthat a valid patent application can no longer be filed in aparticular country.

1.3 Paris Convention

1.3.1 In order to assist inventors, a number of countries,

including South Africa, have entered into an agreement, theParis Convention for the Protection of Industrial Property,whereby nationals of such countries can obtain the benefitsof a so-called Convention priority right. In terms of theConvention, nationals of member countries may file a firstpatent application in any one country and are then entitled tofile further patent applications in the other countries, even ifthe invention has been disclosed and/or used after the filingof the first patent application, if the invention has beenadequately described in the first application and ifcorresponding foreign applications are filed within a year ofthe first filed application. These patent applications are

referred to as "Convention patent applications" and thecountries, known as the "Convention" countries, are:-

Albania * Finland Algeria * France Antigua and Barbuda Gabon Argentina Gambia Armenia Georgia

* Australia * Germany* Austria Ghana

Azerbaijan * GreeceBahamas GrenadaBahrain GuatemalaBangladesh Guinea

Barbados Guinea-Bissau Belarus Guyana Belgium Haiti Belize Holy See Benin Honduras

Bhutan HungaryBolivia Iceland

Bosnia and Herzegovina * IndiaBotswana Indonesia

* Brazil Iran (Islamic Republic of) Bulgaria Iraq Burkina Faso * Ireland

Burundi * IsraelCambodia Italy

Cameroon Jamaica* Canada * Japan

Central African Republic Jordon Chad Kazakhstan Chile Kenya

* China * Korea (Democratic Colombia Peoples Republic of) Congo Kyrgyztan

Congo (Democratic Republic of) Laos* Costa Rica Latvia

Cte dIvoire Lebanon* Croatia Lesotho

Cuba Liberia Cyprus Libya Czech Republic Liechtenstein

* Denmark Lithunia Dominica Luxembourg

Dominican Republic Macedonia (former Ecuador Yugoslav Republic of)

Egypt MadagascarEl Salvador MalawiEquatorial Guinea Malaysia

Estonia Mali


2/8

2

Malta Sierra Leone Mauritania Singapore

Mauritius * Slovakia* Mexico * Slovenia

Moldova (Republic of) South Africa Monaco * Spain

* Mongolia Sri Lanka Morocco Sudan Mozambique Suriname

Nepal Swaziland* Netherlands * Sweden* New Zealand * Switzerland

Nicaragua Syria Niger Tajikistan

Nigeria Tanzania* Norway Togo

Oman TongaPanama Trinidad and TobagoPapua New Guinea TunisiaParaguay * TurkeyPeru Turkmenistan

* Philippines * Uganda Poland * Ukraine

Portugal * United Arab EmiratesQatar * United Kingdom

Romania * United States of America* Russian Federation Uruguay

Rwanda UzbekistanSaint Kitts and Nevis Venezuela

Saint Lucia VietnamSaint Vincent and the Yugoslavia

Grenadines ZambiaSan Marino ZimbabweSao Tome and Principe

Senegal

Countries where patent applications aresubjected to a tehnical examination (seeparagraph 1.4);

PCT member countries (see paragraph 1.5.7) ;

Denmark includes Faroe Islands;

Portugal includes Azores and Madeira;

United Kingdom includes the Isle of Man;

United States of America includes all itsterritories, eg. Puerto Rico, Guam, AmericanSamoa and Virgin Islands.

An applicant is entitled to the benefits provided by theConvention if a first filed or basic patent application in SouthAfrica was accompanied by a provisional specification or acomplete specification in the first instance.

1.3.2 The benefits provided by the Convention istermed a priority right. Thus, if further correspondingforeign applications are filed within a year of the basicapplication one can "claim priority". Any such applicationwill have, as its effective date, the date of filing of the basicpatent application and not, as would normally be the case,the actual date of filing of the foreign application. The dateof filing of the basic application is termed the "priority date".Accordingly, the novelty requirements of the country in

question would only need to be satisfied as at the prioritydate and not as at the date on which the foreign applicationis actually filed, thereby excusing any disclosure and/or useof the invention by the applicant or anybody else subsequentto the priority date. Further, if someone else files acompeting patent application for the same invention, theperson having the earlier priority date will normally begranted the patent.

1.3.3 A Convention patent application must beaccompanied by a complete specification.

1.3.4 As will be noted from the list of countries inparagraph 1.3.1 above, not all countries are members of theConvention. Notable exceptions are Namibia and Taiwan.Thus, if valid patent protection is desired in non-conventioncountries, the novelty requirements of the country in

question must be satisfied as at the date of filing of thepatent application in that country.

Unfortunately, the laws of Taiwan specify that the novelty ofan invention is destroyed if the invention is made available tothe public anywhere in the world. Thus, if the invention ispublicly disclosed and/or used, even if a patent applicationhas been filed in South Africa, it will not be possible to file avalid patent application in Taiwan or any other country whichis not a member of the Convention and which has similarlystrict novelty requirements. Furthermore, patent applicationsin Taiwan have to be accompanied by a completespecification. Thus, if patent protection is desired in Taiwanand if the costs of preparing a complete specification andfiling the application are not to be incurred before thecommercial value of the invention has been assessed, thenthe invention may only be disclosed in confidence.Preferably an acknowledgement in writing should beobtained from anybody to whom the invention is disclosed.Such an acknowledgement must clearly identify the parties,the material being disclosed and specify that the disclosure isin confidence.

In Namibia , a patent application may be filed there if theinvention is not known or used by others in Namibia and has

not been on sale for more than two years in any countryoutside it. Further, a patent application in Namibia may beaccompanied by a provisional specification but then acomplete patent application must be filed within ninemonths, and not one year as in South Africa.

1.3.5 Although it is preferable to file correspondingpatent applications in the Convention countries within a yearof the basic patent application (in order to obtain the priorityright) patent applications may be filed in these countries afterexpiry of the convention year, if the novelty requirements ofthe country in question are still satisfied as at the actual dateof filing in the country in question. Patent applications incountries that are not members of the Convention, andpatent applications that are filed more than a year after thebasic application in a country that is a member of theConvention, are termed "non-Convention" patentapplications.

1.3.6 As the novelty requirements vary from countryto country, it is not possible to list them all in this pamphlet.The novelty requirements of any country of interest will be

supplied on request. However, it should be noted that inmost countries it is not possible to obtain valid patentprotection after the Convention year has expired, if theinvention has been made known, described in a printedpublication or if a patent has been granted anywhere. Thus,once a basic complete specification has been filed in South


3/8

3

Africa, or elsewhere, if other patent applications arecontemplated, but it is not possible to file such applicationsas Convention applications, then we should be instructed todelay acceptance of the basic complete specification therebyto delay grant. If this is not done, then the basic completespecification may be accepted several months after it hasbeen filed and the acceptance published in the Patent Journaland a patent will be granted. After publication or grant it will

not be possible to file any valid corresponding patentapplications in most of the important overseas countries. Itmust also be noted that in many countries a completespecification is laid open to public inspection 18 months afterthe priority date , ie after about 6 months after the completespecification is filed. This laying open also can prevent thesubsequent filing of non-convention applications.

1.4 Examination and prosecution

1.4.1 In South Africa the patent office considerspatent applications that have been filed only to ascertain ifthe required formalities are satisfied. This is also the case insome other countries such as Zimbabwe, Malawi, Namibiaand the other surrounding states. However, in most of theimportant overseas countries, patent applications areexamined on the merits, and patent office examiners conducta search to ascertain what relevant prior art there is and theythen compare the claims of the application (in which thescope of protection that one desires is defined) with the priorart. If the particular examiner is of the opinion that any claimis too broad in the light of the prior art he rejects that claim.In some countries examiners may only reject a claim

because the invention defined therein is not new, and inother countries (such as the USA, most European countries,

Japan and Taiwan) examiners may also reject a claimbecause the invention described therein is obvious in thelight of prior art that the examiner has cited against theapplication.

1.4.2 Prior art cited against an application in onecountry is usually also relevant in all the other countries inwhich corresponding patent applications have been filed. If apatent application is filed in the USA there is a continuingobligation on the applicant to advise the US patent office ofall relevant prior art of which the applicant is aware. Thisobligation also applies in certain other countries. Thus, if anextremely relevant item of prior art (such as a prior patent) isfound in any other country, which totally invalidates theapplication in that country, one must advise the US patentoffice. If this particular item of prior art (or some equallydamaging prior art) is not found by the examiner in any othercountry in which patent applications have been filed, patentsmay be granted in such other countries. However thesepatents will most probably be invalid and they couldsubsequently be attacked by anybody. Such an attackercould conduct searches to investigate any further relevantprior art other than that cited against the patent in issue, andif the party attacking the patent finds the extremely relevantitem of prior art referred to above, it would be used to attackthe patent.

1.4.3 If, after examining the application, the examinerrejects any of the claims, the applicant must amend theclaims to delete those claims that have been rejected and/orhe must submit arguments to the examiner in an attempt topersuade the examiner that his objections are unfounded. Ifand when an applicant is able to satisfy the examiner, that allthe claims are acceptable and all the examiner's objectionshave been responded to, then the application will be allowed.

1.4.4 In some countries, such as Germany, once theapplication has been allowed, a notice is published in apatent journal or gazette to advise the public thereof and theapplication then enters an opposition stage in which anyinterested party may oppose the application. If nobodyopposes the application, or if any opposition is successfullydefended, then the patent is granted. If an application isopposed it may take several years before the matter isdecided.

1.4.5 In other countries, once an application has beenallowed, the patent is granted without any opposition stage.However, in some of these countries, such as the USA, it is

necessary to pay an official sealing fee to obtain grant of thepatent.

1.4.6 In some countries, such as the USA, examinationoccurs automatically six months to two years after theapplication is filed. In other countries, it is necessary torequest examination with the payment of an official feewhich can be substantial (in the order of R5000 toR10 000). In those countries where examination must berequested, it is possible to defer examination for severalyears. For example, in Japan and Germany it is possible to

defer examination for up to seven years.

1.5 Regional patent applications

1.5.1 Normally, if patent protection is required in aparticular country, a patent application must be filed in thatcountry and prosecuted in that country. In order to assistinventors a number of countries have come to regionalarrangements and have established regional patent officeswhere a single application may be filed designating a numberof countries. There are five such regional arrangements thatshould be noted:

C The European Patent Convention

C The Eurasian Patent Convention

C The African Regional Industrial PropertyOrganisation (ARIPO)

C The African Organisation for IntellectualProperty (OAPI)

C The Cooperation Council of the Gulf Arab States(GCC).


4/8

4

1.5.2 European Patent Convention The European Patent Office (EPO) has a main office inMunich, with sub-offices in various contracting states. Theofficial languages of the EPO are English, French andGerman. A European patent confers on its proprietor, ineach contracting state for which it is granted, the samerights as would be conferred by a national patent granted inthat country. The enforcement of a European patent must,

however, take place in the country concerned according tothe national law of that country.

1.5.2.1 European patent countries At present, Austria, Belgium, Cyprus, Denmark, Finland,France, Germany, Greece (Hellenic Republic), Ireland, Italy,Liechtenstein, Luxembourg, Monaco, Netherlands, Portugal,Spain, Sweden, Switzerland, and the United Kingdom arecontracting countries. It is possible that other countries,such as Norway, will also become contracting countries inthe future. So-called extension agreements have also beenestablished between the European Community and certain

countries, whereby these countries can also be designated inan EPO application. At present extension agreements existwith the following countries: Albania, Latvia, Lithuania,Macedonia, Romania and Slovenia.

1.5.2.2 General procedure A European (EPO) patent application, like a national patentapplication, can be filed as a "convention" application asdiscussed in paragraph 1.3 above. A European patentapplication follows the general procedure of filing, examiningfor form, examining for substance, official action,amendment, allowance, advertisement and grant. However,

instead of this procedure taking place individually andseparately in each of the contracting countries, withtranslations at various stages, this procedure now takesplace once only (normally for us in South Africa in English).

1.5.2.3 European patent applicationAt the time of filing of a European application, the applicantmust designate those contracting states in which heultimately requires patent protection. Further designationsmay be added within a limited time period, with the paymentof extension fees. Countries which have been designatedmay be withdrawn. Once the prosecution of the application

has been completed, national patents are granted by or onbehalf of each of the contracting countries which weredesignated.

1.5.2.4 Initial processing All European applications are forwarded to an appropriatesearch division, where a search is made for relevant prior art.When the search is completed, a search report is issued inwhich prior art that has been found is listed. At this time, anapplicant may file an amendment if required. Thereafter novoluntary amendment is permitted. Eighteen months fromthe filing date or from the earliest priority date, the

application as originally filed is published, together with thesearch report and any amendments which may have beenmade.

1.5.2.5 Substantive processing The applicant must request substantive examination withinsix months of publication of the search report. If substantiveexamination is requested the application is subjected to atechnical, substantive examination by an official Examiner.The Examiner then issues a report listing any objectionswhich he may have. If there are any objections a responsemust be filed within a period of 4 months in reply to the

Examiner's objections, if the applicant wishes to proceedwith the application. At this stage, amendments can also bemade to the specification and claims. If the Examiner'sobjections can be overcome then the application is allowed.The specification and claims must then be translated into thelanguages of the various countries that have been designatedand individual agents appointed for the conversion of theEPO application into national patents in the designatedstates. Once the application has been allowed there is a ninemonth period in which the matter can be opposed by anyinterested party.

1.5.2.6 Advantages and disadvantages of a European patent application

(a) A disadvantage of lodging a European patentapplication is that if the application is rejected by theEPO then the applicant does not obtain a patent in anyone of the designated countries. Thus, by followingthe EPO route an applicant may lose all right to a patentwhereas, if individual patent applications are filed in thevarious European countries, ie via the national route,patents may possibly be obtained in at least some ofthe countries.

(b) If a European patent application is opposed there couldbe significant delay in obtaining patents in thedesignated countries. However, as several of thecontracting counties do not provide for oppositionprocedure, if the national route is followed and theExaminers in the countries concerned allow theapplication in those countries, then patents will begranted there.

(c) The EPO route has the advantage that translationcharges, where necessary, are deferred untilprosecution has been completed. If prosecution issuccessful, patents will, however, still be grantedindividually for the various designated countries and willhave to be maintained separately by the payment ofannual renewal fees. Translation costs are high, beingin the region of R12 000 to R18 000 (or more) percountry for a specification of normal length. The costsof requesting examination are also high, ie about R15000 to R20 000.

(d) A European patent application requires only oneprosecution procedure and amendment. This can all bedone in English. Translations are done afterprosecution has been completed. There can thereforebe a considerable saving in filing and post-filingprosecution charges when the EPO route is followedinstead of the national route. Where a national route


5/8

5

is followed, all amendments have to be made in thelanguage of the country. Such amendments andarguments in support will have to be translated into thelanguage in question. Such multiple prosecutions inforeign languages will be more costly than a singleprosecution in English.

1.5.3 ARIPO (African Regional Industrial Property

Organisation) ARIPO like the EPO, is a regional patent applicationprosecution organisation. ARIPO provides the opportunity toobtain protection by means of a single filing of a patent orindustrial design application, in some or all of the English-speaking African countries which are party to ARIPO. ARIPOis empowered to grant patents and to register industrialdesigns. Currently there are fifteen contracting Stateswhich are party to the Protocol:

Botswana Somalia*Gambia SudanGhana SwazilandKenya TanzaniaLesotho UgandaMalawi ZambiaMozambique ZimbabweSierra Leone

* Somalia has acceded to the Lusaka Agreementestablishing ARIPO, but has not yet ratified the HarareProtocol on Patents and Industrial Designs.

ARIPO has its headquarters in Harare, Zimbabwe. Furtherinformation will be given on request.

1.5.4 OAPI (Organisation Africaine de la PropritIntellectuelle)

The OAPI office is at Yaounde. A single registration atOAPI protects the invention in all member states:

Benin GuineaBurkina Faso Guinea-BissauCameroon Ivory CoastCentral African Republic MaliChad MauritaniaCongo NigerEquatorial SenegalGabon Togo

Patents are granted for a term of ten years. The term of apatent may be extended for two further terms of five yearseach. Further information will be given on request.

1.5.5 Eurasian Patent Convention The Eurasian Patent Convention was established in 1994between the following countries of the former Soviet Union :Russia, Armenia, Azerbaijan, Belarus, Georgia, Kazahstan,Kyrgyzstan, Moldova, Tajikistan and Turkmenistan. AEurasian patent application can be filed at the EurasianPatent Office in Moscow as a "convention" application (asset out in paragraph 1.3 above) and the specification mustbe in the Russian language. A Eurasian patent, which

automatically applies in all member countries, remains inforce for 20 years, subject to the payment of annual renewalfees.

1.5.6 GCC (Cooperation Council of the Gulf Arab States)

The Cooperation Council of the Gulf Arab States approvedthe GCC Patent Law in 1992 and the implementing

regulations were published recently. The following countriesare members of the GCC : Bahrain, Kuwait, Oman, Qatar,Saudi Arabia and United Arab Emirates.

The GCC application, claiming convention priority in terms ofthe Paris Convention, is mutually exclusive with acorresponding domestic application in any GCC membercountry. The specification and claims must be in English andArabic. The patent term is 15 years from the date of grant.

1.5.7 PCT (Patent Cooperation Treaty) The Patent Cooperation Treaty is an international agreement,administered by the World Intellectual Property Organisation(WIPO). In terms of PCT, a national of any member countrycan file a single PCT application designating any number ofother member countries as designated countries in whichpatent protection is to be obtained. This procedure entails anumber of advantages (including cost advantages) where anational of a PCT member country wishes to file multiplecorresponding patent applications in other PCT membercountries.

There are currently some 100 PCT member countries; thesecountries are marked with bullet points in the list ofconvention countries in paragraph 1.3.1.

South Africa's accession to the Patent Cooperation Treaty(PCT) became effective on 16 March 1999, when SouthAfrica became the 100th member of the PCT. As from 16March 1999, South African nationals or residents are able touse the PCT filing procedure in international applications(which may be filed in South Africa or eg. at the InternationalBureau in Switzerland). From the same date, nationals orresidents of other PCT member countries will be able todesignate or elect South Africa in PCT international

applications filed in other member countries. Furtherinformation will be given on request.

1.5.7 Cost of filing and prosecuting foreign patentapplications

Charges in other countries and exchange rates arecontinually changing and the following estimates are given asa rough guide only, as a basis for budgeting. These chargesare irrecoverable if a patent application is abandoned at anystage after filing.

1.6.1 Initial filing charges

The filing of a patent application in Namibia costs aboutR3000 to R4000. If applications are filed in Zimbabwe,Zambia or Malawi, the cost is about R6000 to R8000 each.


6/8

6

In overseas countries, the filing costs are substantially more,in particular in those countries where the specification mustbe in a language other than English, and translation isnecessary. For an invention of average complexity, patentapplications in English-speaking countries cost about R15000 to R18 000 and in non-English-speaking countries R20000 to R30 000. Where specifications are long or complexand if there are a large number of claims, there could be

substantial additional charges. If a list of specific countries isfurnished, a more accurate estimate of charges can be given.

The cost of an application at the EPO designating allcountries can be about R40 000 to R50 000 (or more).Thus, an applicant will save initially by filing an EPOapplication, if patent protection is required in three or morecountries. Similar costs can be expected for an OAPIapplication.

The above costs do not include the cost of preparing a basiccomplete specification which is normally included in the costof preparing and filing of the complete specification in SouthAfrica.

1.6.2 Additional prosecution charges In addition to the initial filing charges, further charges willbecome payable in most overseas countries. Thus, in thosecountries where a search and/or examination must berequested, there will be a charge therefor. For example thecost of requesting examination at the EPO presently in theregion of R15 000. Once an application is examined and anofficial letter is issued by the patent office in question, costsare incurred in considering it, obtaining copies of cited priorart and reporting. In most cases that are proceeded with, it

is necessary to amend the specification and claims and/orprepare and submit arguments to overcome objections raisedby the examiner. The cost of preparing such amendment andarguments will depend on the nature of the examiner'sobjections. Further, once the application is allowed, asealing fee is payable in many countries. Some countriesalso require maintenance fees to be paid. We cannot give anaccurate indication of the prosecution charges that will arisein any particular country. However, experience has indicatedthat the average prosecution charges per country are at leastR10 000-R15 000. One must bear in mind that it can takeseveral years before a patent is granted and accordingly theprosecution charges referred to above are spread over anumber of years.

1.6.3 Maintenance fees As discussed earlier, in some countries maintenance feesmust be paid, usually annually, and these may be substantial.

1.7 Microbiological processes or products The respective patents laws of, inter alia, the EPO, USA,Japan and Australia include special provision in respect ofapplications which claim as an invention a microbiologicalprocess or a product thereof. A common provision requiresthat, if no samples of the microorganism in question areavailable to the public, a culture of the microorganism mustbe deposited at a recognised culture collection, and the nameof the culture collection, the date of deposit, and the official

deposit number must appear in the complete specification.Certain countries may require that the deposit of the culturebe made prior to the filing dates of the respective patentapplications in those countries. Most of the importantcountries are signatories to the Budapest treaty, andaccordingly recognise the culture collections listed therein.The fee levied by the institutions responsible for the culturecollections vary, but generally are in the region of R500-

R1000 (or even more) per deposit.

1.8 Confirmation and revalidation patents In some countries, notably in South America, it is possible toobtain a confirmation patent after a patent for the inventionhas been granted in some other country, even though theinvention has been patented and (in certain cases) usedelsewhere than in the country in which the confirmationpatent is desired. Similarly in some of the dependencies, orerstwhile dependencies, of Britain, such as Botswana,Swaziland and Hong Kong, a British patent automaticallyextends to the territory or may be extended there byregistration. A South African patent may also be registered inSwaziland and Botswana.

1.9 Important points to bear in mind Prior to embarking upon a foreign patenting programmeattention should be given to at least the points dealt with inthe following paragraphs.

1.9.1 Agreement with inventor assignee applicant Before foreign patent applications are filed, it is imperative tohave an agreement between all the parties concerned (ie theinventor, the South African applicant, and the foreignapplicant) clearly defining their rights in and to the invention,

both for the Republic of South Africa and for foreigncountries. The agreement should define their reciprocalrights and obligations as to maintenance, prosecution, etc.,of the applications. Additionally, foreign Patent Officesfrequently require proof of the existence of such anagreement in order to establish the foreign applicant's rightsto file foreign patent applications. This is of particularimportance in case the inventor is not available or is unwillingto sign the necessary documents. If required we can assistin preparing such an agreement.

1.9.2 Novelty searches

1.9.2.1 Bearing in mind the heavy costs of filing patentapplications in other countries (see paragraph 1.6) it isadvisable, if not essential to have novelty searchesconducted. They may be conducted locally and/or abroad totest the degree of novelty of the invention. The prospects ofobtaining a valid Patent for the invention in other countriescan be assessed from such searches. The searches shouldpreferably be done before the basic (South African) completespecification is prepared and before foreign applications arefiled.

1.9.2.2 Novelty searches also have the advantage thatthey can give an indication of the strength of the patentwhich may be granted on the South African patentapplication. They will also enable the draftsman of the


7/8

7

complete patent specification to know, in the light of priorpatents revealed by the searches, how widely claims may beframed for the invention.

1.9.2.3 As a rough guide, a fairly adequate search cannormally be made for an invention of average complexity

- in South Africa, through available South African

patent specifications, for about R3000 to R6000,- in Great Britain through available Britishspecifications, for about R5000 to R8000,

- in the United States, through available U.S. patentspecifications, for about R5000 to R8000,

- in Holland or the UK, through the patentspecifications of Britain, USA and several continentalcountries, for about R10 000 (or more, depending onthe subject matter).

Costs of searches can vary widely, depending upon thesubject matter, the extent and complexity of the field inwhich the invention falls, and in which countries thesearches are to be made. It is also possible to have acursory search conducted or a fixed price budgetinternational search at lesser costs.

1.9.2.4 A favourable search result cannot be regarded asa conclusive indication of the novelty of an inventionbecause no guarantee can be given that in a search allrelevant disclosures have been located. If a search is to bemade then we must be instructed well before the due datefor filing applications because the searches can be completedonly in about four to eight weeks. A search in Holland cantake up to three months to conduct.

1.9.3 Patentability and commercial value of aninvention

An invention may be patentable but may have only littlecommercial value, or it may have substantial commercialvalue but may be of doubtful patentability. Again thecommercial value of an invention may be substantial in onecountry and less in another, depending upon the facilitiesavailable to the patentee for exploiting it in that country.Bearing in mind that a patent is a monopoly right and hasvalue only when it is desired to prevent competition in thecountry concerned, there is no advantage in filingapplications for patents in countries where the monopolyright is not really required. There can be limited merit inhaving a large number of patents in foreign countries if theinvention is not going to be exploited.

1.9.4 Subject matter and patentability in differentcountries

Some inventions may be accepted by examiners of somePatent Offices as having sufficient subject matter to bepatentable but not by those of other Patent Offices, becausepatent laws and their interpretation differ from country tocountry.

1.9.5 Renewal fees In arriving at a decision on a patenting programme it must beborne in mind that, with the exception of a few countries,annual renewal fees are payable in order to maintain thePatent in force when granted. In some countries the annualfees are relatively small (about R400) but in other countriesrenewal fees increase annually to a very substantial figure.For example the cost of maintaining a patent in force in

Germany or Holland throughout the term of the patent canexceed R50000 and R40000 respectively. In Sweden and inBrazil, the total renewal fees per patent are in the region ofR20000 and R15000 respectively. The total renewal fees tokeep patents in the ARIPO countries in force for their fullterm exceeds R40000. More detailed information in thisregard is available on request.

1.9.6 Working of inventions In some countries inventions have to be "worked" if claimsfor compulsory licences are not to be risked or if theexistence of the patents themselves is not to be endangered.Different countries have different requirements. Generally

"working" requirements are met if inventions are beingactively exploited by manufacture in the country concerned.This usually requires the grant of licences.

1.9.7 Instructions to be given timeously

1.9.7.1 Patenting programmeMuch work is involved in the preparation of documents forfiling foreign patent applications. For instance, theapplication in some countries require a lengthy legalisationprocedure. Accordingly, we must be advised of the extentof the patenting programme as soon as possible.

1.9.7.2 Technical information Depending on the complexity of the invention we mustreceive full details of the invention about three monthsbefore the due date, to ensure the timeous despatch of thedocuments, and their translation where necessary.

1.9.7.3 Time Limits If instructions for filing applications abroad have been left toolate, then it may be possible in certain circumstances toobtain extra time by post-dating the basic application inSouth Africa. Owing to circumstances beyond our control,eg postal delays and strikes, we can never guarantee thatforeign applications will be filed under the convention. Suchpost-dating involves a risk that the post-dated applicationmay not be recognised by some countries for conventionpriority purposes. It is a procedure which should not beresorted to except under exceptional circumstances. Furtherinformation will be given on request.

1.9.8 When charges are payable The filing of patent applications abroad requires heavydisbursements by us, and we must be placed in funds beforewe despatch the application documents for filing abroad, ieat least six weeks before the due date, because once we


8/8

8

have instructed our correspondents, we have to pay theircharges. During prosecution of the application, further heavydisbursements can be made and we require that funds bemade available to us from time to time.

1.9.9 Amendment of South African patent application If as a result an examination, it is necessary to amend theclaims of corresponding applications, it may be advisable,

and in some circumstances even imperative, to amend theSouth African case correspondingly. If the claims are toowide in scope, then the patent is invalid. No steps shouldtherefore be taken to enforce the RSA patent before theclaims (and specification, if necessary) have been amended.Depending upon circumstances, we recommend that suchamendment of the RSA case be carried out as soon possibleafter prior art, necessitating amendment, comes to theattention of the South African applicant or patentee.

2. Utility models

2.1 In some countries, notably in Australia, Brazil,Germany, Italy and Japan, it is possible to obtain protectionby way of a utility model (also known as a petty patent) foran article which does not have sufficient technical merit tosupport a patent. Such an article may have a particular shapefor functional purposes. Processes cannot be protected byutility models. A utility model may be obtained by way of aConvention application based upon a basic application in aConvention country, as for any patent application, or can beobtained upon a non-convention application.

2.2 If an application for a full patent is rejected, thenit may, in some countries such Argentina, France, Germany,

Japan, Spain and Taiwan, be converted into an applicationfor a utility model. A utility model application is not

subjected to as rigorous an examination into novelty as anapplication for a patent, but in most countries, the term of autility model is less than that of a full patent.

3. Designs

3.1 As indicated earlier, a registered design protectsaesthetic features of shape and appearance of an article and,

in most countries, a registered design does not provideprotection for functional features.

3.2 Further, as with patents, the protection affordedby a registered design is territorially limited, ie if protection isrequired in any particular country, then an application mustbe filed in that country. There are only a few regionalarrangements for registered designs, ie ARIPO and Benelux.

3.3 There is an International Convention applicableto designs that is similar to that for patents. The maindifference is that corresponding foreign design applicationshave to be filed within six months of the first-filed designapplication to be able to claim convention priority.

3.4 In most of the important countries, designapplications are also examined and our comments earlier inthis regard with respect to patents are applicable. In somecountries there are also maintenance fees.

4. General

If difficulties are experienced in any country in exploiting aninvention, our expertise and facilities may be of assistance.Further information and assistance will be provided on

request.

P115

PretoriaPO Box 1014Pretoria, 0001South Africa

JohannesburgPO Box 10155Johannesburg, 2000South Africa

Cape TownPO Box 1513Cape Town, 8000South Africa

DurbanPrivate Bag 16Umhlanga Rocks, 4320South Africa

Tel Nos.: (National)(International)

(012) 481 1500+27 (12) 481 1500

(011) 642 5057+27 (11) 642 5057

(021) 418 8560+27 (21) 418 8560

(031) 566 1259+27 (31) 566 1259

Fax Nos.: (National)(International)

(012) 362 6440+27 (12) 362 6440

(011) 642 1914+27 (11) 642 1914

(021) 419 5729+27 (21) 419 5729

(031) 566 1267+27 (31) 566 1267

e-mail: [email protected] [email protected] [email protected] [email protected] URL: http://www.adamsadams.co.za

Pretoria, Johannesburg, Cape Town & Durban Partners Charles Stewart J ohn Home Brett Oldridge Adria n Schweizer Dennis Dold Geoff Hobbs David Sheppard Alan Lewis Alan SmithJohn Williams Stephan Ferreira Martin Rotteveel Chris Job Eugene Eybers Gavin Kotze Esm du Plessis Mike Posemann Tony Seymour Johan von WiellighDuncan Taylor Geraldine Erlank Ike Papageorge Howard Rogers Jan Stander Dario Tanziani Johan du Preez Colin MacKenzie Nelia Hickman Maritte ViljoenCraig Forbes Craig Kahn Charn le Roux Samantha Copeling Grard du Plessis Marilyn Krige Phil Pla-Pillans Louis van der Walt Suzaan Laing Simon BrownGrgor Wolter Russell Bagnall Andrew Clark Joseph Goedhals Blain de Villiers Megan Moerdijk David Scheepers Colin Truter Tshepo ShabanguAssociates Ferdi Myburg Madeleen Rossouw Leander Opperman Jens Triebel Ilse Lock Claire Russell Jacques Loock David Richter Lucy Signorell i Kelly ThompsonJenny Pienaar Assisted by Bruce Lister Lance Joel Karen Lderitz Sunita Kalan Deborah Marsicano Alistair Smith Fiona Southwood Janice Galvad Karin van der Merwe Dusty-Lee WeatherheadNicolette Koch Lindsey Kilmartin Bernadette Heever Nishi Harryparsad Ayesha Dollie Janine Nainkin Steven Yeates McLean Sibanda Roelof Grov Dominic Steyn Carel SmitPieter BritsGeneral Manager Jeremy Botha Foreign Patents Manager Corrie Hall
http://www.adamsadams.co.za/http://www.adamsadams.co.za/http://www.adamsadams.co.za/http://www.adamsadams.co.za/

Adams Patent

Documents

Transcript of Adams Patent