Practical review of South African National Phase Patent Application-to-Grant timeframe
In terms of the South African Patents Act (the “Act”), the Registrar is directed to examine every application for a patent and every complete specification accompanying the application, or lodged at the South African Patent Office in pursuance of the application, in the prescribed manner to ensure that it complies with the requirements of the Act. The important qualification is that the examination should be done in the prescribed manner. For an understanding of this qualification, reference can be had to the South African Patent Regulations (the “Regulations”) which states that the examination is limited to whether an application complies to the prescribed formalities.
The above provisions show that the South African patent system is for all practical purposes a depository system. With this comes certain advantages to the applicant, the most important being that timeframes are clear and comparatively short. This holds true for all South African national phase patent applications.
In terms of the Act, once an applicant in a national phase patent application has adhered to all the formal requirements to commence the national phase at the South African Patent Office, the application must be accepted within 12 months. Thereafter, three months is afforded in which to publish acceptance, the date of this publication being the date of grant.
Two notable exceptions to this timeframe include where the delay is not due to an act or an omission by the applicant or where an applicant formally requests an extension of time. A request for an extension is common practice amongst South African firms in national phase patent applications, and in most cases the delay is automatically requested by the patent attorney unless expressly directed otherwise by the applicant. The reason for this is that a delay allows for the consideration of the outcome of substantive examination in foreign jurisdictions before the corresponding South African application is accepted, after which acceptance the scope of allowable amendments to the application is substantially narrowed in terms of the Act.
The above practice, in combination with the notable exclusions, makes it difficult to understand just how quickly South African national phase applications can be processed and accepted by the Registrar once the formal requirements are met. However, considering the national phase applications filed per year at the South African Patent Office between 1 January 2010 and 31 December 2018, and evaluating the time it took for those to be granted a clear indication of the practical side of national phase patent applications in South Africa emerges.
Table 1 shows relevant time (in days) data for national phase patent applications filed at the South African Patent Office between 1 January 2010 and 31 December 2018. The fact that eight out of the nine years in question has an average time to grant of greater than 15 months (which is approximately 456 days) which may indicate how extensive the above extension practice has become in South Africa.
|Percentage of Applications
Taking Less Than
12 Months to Grant
|Fastest Time to Grant||54||62||93||85||79||79||78||126||64|
|Longest Time to Grant||3276||3120||3012||2667||2331||1965||1603||1262||873|
|Average Time to Grant||556.1||475.2||478.3||536.2||686.3||686.8||657.2||551.6||405.3|
|Median Time to Grant||463||433||418.5||446||580||596||593||497||406|
|Mode Time to Grant||265||265||259||447||469||470||471||443||302|
|Percentage of Applications
Taking Less Than
Mode Time to Grant
However, the interesting insight lies within the fastest time to grant, or the least number of days taken to grant, recorded for any national phase patent application filed in each year, as well as the mode, or most frequently experienced number of days to grant, for each year.
For each year, except in 2017, there were national phase patent applications which proceeded to grant within 100 days of filing. Furthermore, even with the widespread extension practice, the most frequently experienced number of days from application to grant remains around the 15-month deadline, and for certain years is even well below 15 months. The figure below, showing a histogram on the number of days from application to grant for national phase patent applications filed between 1 January 2010 and 31 December 2018, may provide a more accurate understanding in this regard.
It seems that a small percentage of national phase patent applications have proceeded to grant in under 200 days from filing. However, it is noticeable that by targeted early adherence to the formalities combined with a request of expedited acceptance, a comparatively and staggeringly short period of time between filing the application and grant thereof can be sought by the applicant.
It is clear that a large percentage of national phase patent applications proceed to grant within the 15-month prescribed period, and the dominant majority of applications are granted well before the expiry of two years from the date of filing the application.
If one views the above in light of the fact that, per the Act, all granted South African patents are deemed to be valid until proven otherwise on a balance of probabilities in a competent court, it is clear that South Africa offers a unique environment for patentees.