Many jurisdictions offer a government incentive for obtaining a granted patent. Therefore, South Africa, by virtue of not officially performing substantive examination of patent applications is currently, and has been for quite some time, an attractive option for applicants looking to receive such government incentives. South African patent law allows for an applicant to request the expedited acceptance resulting in a granted patent within as soon as a month or two of filing which, naturally, is an even bigger advantage. Not only do such applicants receive a granted patent, albeit without undergoing substantive examination, but they also stand to receive their government incentives well before others following the normal course of events. Resultantly, numerous patentees from such jurisdictions jumped on this bandwagon to file patent applications, accompanied by a request for expedited acceptance, to receive their government incentives sooner. Regularly, after receiving their grant, they would abandon the patent and be on their way.

Should an applicant wish to request expedited acceptance of a patent they should be fully aware of the inherent risks in doing so. These include that: 

• an invalid claim may render a patent unenforceable or, at best, partially invalid until the invalidity has been remedied;
• the patent stands to be invalidated based on a material misrepresentation in the applicant’s declaration, if the applicant knew or ought to have known that the claims would be invalid at the time of grant;  
• an amendment may be refused due to an undue delay by a patentee to make a necessary amendment(s) upon learning of invalidity; and 
• an applicant may sacrifice the opportunity to broaden the scope of protection by filing pre-grant amendments or fresh applications (divisional patents).

Although expedited acceptance has been available for many years, prudent applicants have avoided such expedited prosecution and have rather opted for delaying acceptance of their South African patent applications to ensure that their applications conform to counterpart applications that have undergone substantive examination, thereby ensuring a valid and enforceable patent. Despite the majority of applicants being prudent, there are commentators that are of the opinion that many applicants have recently abused the expedited acceptance procedures which have arguably diluted the credibility of the South African patent system. 

In light of the seeming abuse of the expedited grant system in South Africa, on the 11th of January 2023, the Registrar of the South African Patent Office brought about a new era for patent prosecution by issuing a draft practice notice laying out stringent requirements for requesting expedited acceptance of a patent application. To summarise, effective from the 1st of March 2023, expedited acceptance for patent applications shall only be allowed for applications that are:

• PCT National Phase applications with a positive written opinion or a positive International Preliminary Report on Patentability (IPRP);
• PCT National Phase where the applicant has declared that the South African National Phase applications claim(s) are wholly within the scope of those deemed acceptable in the IPRP;  
• Convention applications claiming priority in terms of section 31(1)(c) of the Patents Act, where an examining convention country has considered the subject matter of the equivalent foreign application as patentable; and 
• Applications which are equivalents of a simple patent family, where an examining country has considered the subject matter of an equivalent foreign application as patentable. 

This welcomed new proposed practice, if, and when implemented will no doubt increase the veracity of the patents proceeding to grant and oust the days where opportunistic applicants looking to abuse the system for a quick incentive. This will give heed to the case of Gallagher Group Ltd v IO Tech Manufacturing (Pty) Ltd  [ 1 ], where the court emphasized that “It is in the interest of public policy to ensure that patentees only file patents for inventions which they believe are valid, thereby protecting the patent system against abuse.”

Prospective patentees should obtain the necessary advice to help them to traverse the complex field of patent law which will, ultimately, save them a lot of trouble in the future should the validity of their patents ever come into question. In doing so, patentees will not only receive their government incentive but also, by employing principles of delayed gratification, obtain a valid and enforceable patent with commercial value in South Africa.

As always, slow and steady wins the race!

[ 1 ]  G A L L A G H E R  G R O U P  L T D  A N D  A N O T H E R  V  I O  T E C H  M A N U F A C T U R I N G  A N D  O T H E R S  ( 9 6 / 6 7 9 9 )  [ 2 0 1 2 ]  Z A C C P 1 .