Recent developments seem to indicate that the long-mooted introduction of Substantive Search and Examination (SSE) into the South African legal system is finally occurring. To this end, the patent legal fraternity was invited a short while ago to a joint briefing held by the Companies and Intellectual Property Commission (CIPC) and European Patent Office (EPO). Here the EPO Examiners who have been assisting the CIPC in capacity-building laid out their progress on this front, along with their expectation for things to come.

The EPO and CIPC have been working together under a Memorandum of Understanding (MoU) to train would-be South African Examiners. This process has happened in two phases, starting in 2018, and is projected to extend into a third phase ending in 2024. At present, the phases of assistance have involved training and mentorship for South African Trainee Examiners (TEs), along with providing them with search tools and guideline documents modelled closely on European equivalents (eg: the ESPACENET search tool and Guidelines for Examination in the European Patent Office: https://www.epo.org/law-practice/legal-texts/guidelines.html). The 45-odd TEs come from a number of technical backgrounds, and are reported to have taken well to the instruction provided.

With this progress in hand, the CIPC and EPO have now thrown the door open to local patent firms to participate in non-binding SSE. In this process, selected South African complete applications and PCT national phase applications entering South Africa are to be flagged by participating firms and sent to the CIPC. The TEs will then conduct substantive search and examination and issue a non-binding, non-official report on the merits of the application. The local attorney handling the case is then to respond as if an official Office Action were issued, as in other countries with SSE. This mock SSE process is intended to continue even as the actual process of formal acceptance and publication proceeds as normal. The idea here is that the TEs will gain valuable experience and instruction from interacting with real South African patent attorneys. Local patent firms will, in turn, be able to get to grips with the process of SSE as it will eventually be rolled out in South Africa and, it is hoped, allow for local law and practice to be properly incorporated into the process. The much talked-about plan to roll SSE out piecemeal has, it seems, been dropped in favour of this approach.

As to when full, binding SSE will come to our shores: the CIPC has remained tight-lipped on this front, but has again mentioned that a suitable amendment Bill is in the works. The EPO Examiners involved have also provided reassurance that they don’t expect any future Act to substantively change our existing patent law beyond introducing SSE. From the timelines provided by the CIPC, it can be guessed that such an Act is expected to be signed into law sometime in the next few years. Until then, the South African patent legal fraternity will be allowed to engage with a mock version of SSE in preparation for the real thing.