Because South African patent applications are not substantively examined, they may reach acceptance before corresponding applications in jurisdictions such as Europe or the United States have completed substantive examination. For applicants managing international patent portfolios, the ability to control that timing can provide a valuable opportunity to refine the South African claims before grant.

South Africa currently operates a non-substantive examination system for patents. Applications are examined for compliance with formal requirements, rather than novelty and inventive step. As a result, a South African application may be accepted considerably earlier than corresponding applications before examining patent offices.

A delay of acceptance can therefore form an important part of the prosecution strategy.

Managing the timing of acceptance

Regulation 45 of the South African Patent Regulations permits an applicant to request that acceptance be delayed. For ordinary South African applications, the initial period contemplated by the legislation is 18 months from the application date. In the case of a PCT national phase application, section 43F(3)(h) of the Patents Act reduces this period to 12 months from the date on which the applicant complies with the South African national phase requirements.

Section 40 of the Patents Act allows the period for acceptance to be extended by a further three months on payment of the prescribed fee, with further extensions available on good cause shown. In practice, this means that acceptance may ordinarily be delayed to 21 months for convention or direct applications and 15 months for PCT national phase applications, with longer delays remaining possible at the Registrar’s discretion.

KISCH IP has, however, recently seen the Registrar require more detailed reasons when considering further delays for applications that have remained pending for more than six years. Foreign associates managing long-running South African applications should accordingly expect greater scrutiny where substantial further delays are requested.

Keeping South African claims aligned with foreign prosecution

The strategic value of delaying acceptance is particularly evident where corresponding applications are undergoing substantive examination abroad.

Prior art identified by the EPO, USPTO or another examining office may lead to claims being narrowed or amended before grant. Keeping the corresponding South African application pending allows those developments to be considered before the South African claims are finalised.

This can be considerably more efficient than addressing the claims after grant.

Section 51 of the Patents Act permits amendment both before and after grant, but the position becomes more restrictive once acceptance has been published. Post-acceptance amendments may need to be advertised and can be opposed, while an amended claim may not extend beyond the scope of a claim contained in the specification before amendment. The Patent Regulations provide a two-month period within which an advertised amendment may be opposed.

Delaying acceptance can therefore preserve greater flexibility to bring the South African claims into line with claims ultimately found allowable in examining jurisdictions.

Amendment should not be left indefinitely

South African patent law also recognises that delay in correcting claims can have consequences once a patent has been granted.

The courts have considered “culpable delay” when deciding whether an amendment should be allowed. The Supreme Court of Appeal confirmed in https://www3.saflii.org/za/cases/ZASCA/2014/201.html?utm that deliberate delay where a patentee knows claims to be invalid may, in appropriate circumstances, weigh against permitting an amendment. Mere delay, however, without actual or potential prejudice is unlikely on its own to justify refusal.

More recently, the Court of the Commissioner of Patents reiterated that invalidity, knowledge of that invalidity and prejudice remain relevant considerations when culpable delay is raised.

For international applicants, the practical strategy is therefore one of timing rather than delay for its own sake. Keeping a South African application pending can provide time to assess foreign examination, consider relevant prior art and settle an appropriate claim set before grant.

Used carefully, delay of acceptance allows the South African patent to emerge from an international prosecution programme in a form that is better aligned with the applicant’s wider portfolio and better prepared for enforcement.

KISCH IP is assisting clients and foreign associates in managing South African patent applications alongside corresponding foreign filings, including advising on acceptance delays, claim amendment strategies and portfolio alignment where developments in examining jurisdictions may have implications for South African protection.