By Tyron Grant, Partner, Spoor & Fisher

The South African Patent Office issued Practice Note 21 of 2023 on 7 April 20213 setting out the requirements for expedited acceptance of patent applications. The Practice Note will go some way to curbing the abuse of the non-examination system by applicants who request expedited acceptance and grant of South African patents, for example, in order to leverage governmental rebates and incentives awarded on grant of foreign patents.

In a bid to promote innovation, the governments of some countries offer financial incentives and rebates, based on the number of granted patents obtained by their nationals. The China State Council, in the most recent plan of its National Intellectual Property Strategy, targets 12 invention patents per 10,000 people by 2025 and incentivises nationals to achieve this goal. The Indian government, through its Patent Facilitation Scheme, also aims to encourage innovation and provide financial support to those who seek to protect their inventions through patents. In some instances, an Indian national can be awarded INR 10 lakh for a granted foreign patent (which is the equivalent of around R200,000).

A non-examining patent system allows for a patent to be granted without undergoing any substantive examination (i.e. without consideration as to whether the invention claimed in a patent application constitutes patentable subject matter and is novel, inventive and useful). Plans are afoot to introduce Substantive Search and Examination (SSE) in South Africa, however this may still take a number of years to implement.

It makes sense that countries having a non-examining patent system would be the first choice for applicants seeking the grant of a patent, without concern for whether that patent is, in fact, valid or enforceable. For the South African Patent Office, the implication of government-backed, patent-based incentive schemes, is a noticeable increase in the number of applications filed by foreign applicants, especially from China or India. In many cases, these applications are non-convention applications, meaning they do not claim priority from an earlier application and are often filed with a request for expedited acceptance and grant.

According to the Patent Registrar, Thandanani Cwele, 13,976 patent applications were filed through the South African Patent Office in 2022, which is an increase of 28% compared with 2021. A staggering 34% of these applications were filed by foreign applicants in the first instance, claiming no priority. Cwele has indicated that the South African Patent Office has limited capacity to identify patent applications that patently do not meet intrinsic and/or extrinsic patentability requirements. The non-examining patent system is left vulnerable to abuse, where an applicant applies for and obtains a patent for subject matter that it knows to be lacking in novelty or inventiveness, for example. Furthermore, requests for expedited acceptance prejudice applicants of legitimate applications, which are relegated to the back of the acceptance queue. Records show that where expedited acceptance is not requested, acceptance of the application is currently being delayed by anything from 3 to 6 months from the date on which it is scheduled to be accepted.

The Practice Note sets out new requirements for applicants requesting expedited acceptance of patent applications, and came into effect from 11 April 2023.

The Practice Note requires that going forward supporting documents must be submitted with any request for expedited acceptance of a South African patent application made within the first 12 months of filing, if the application is a national phase application stemming from an international application (PCT), or within the first 18 months of filing of all other applications.

The following are acceptable as supporting documents:

(a) for PCT national phase patent applications, a copy of a corresponding Written Opinion of the International Searching Authority (WO-ISA) or International Preliminary Report on Patentability (IPRP), where the WO-ISA or IPRP has considered the subject matter of at least one claim of the PCT application to be both novel and inventive;

(b) a copy of a search and/or examination report of an equivalent foreign patent application where an examining patent office has considered the subject matter of at least one claim of the equivalent foreign application to be both novel and inventive; or

(c) an affidavit from at least one applicant, providing the reasons that expedited acceptance is required for the specific patent application, the affidavit having been properly authenticated as referred to in Rule 63 of the Uniform Rules of Court.

The Practice Note is a bold and proactive step by the South African Patent Office to relieve the delay in acceptance and grant of legitimate applications and to deter those seeking to

abuse the system to obtain patents for subject matter that they know to be ineligible for patent protection.

The Patent Offices of other non-examining African countries, such as Nigeria, may be the next targets for applicants seeking rewards from patent-based incentive schemes. It is likely that these offices will experience the same threat to their efficiency and to the integrity of the patent systems. We believe that these offices should also proactively take steps to deter abusive filings and ensure that legitimate applicants are not prejudiced.

Hopefully, the Chinese and Indian authorities will acknowledge that their patent-based incentive schemes are being abused and will amend these schemes or implement further controls to avoid applicants from abusing non-examining patent offices in order to obtain expedited grant, for patents which, at least on the face of it, appear to be invalid. While it may be tempting to offer financial rewards and rebates for granted patents, it also encourages patenting without innovating, which falls hopelessly short of the objective.

Applications aimed at obtaining granted patents that do not meet patentability requirements, prejudice other legitimate applications and undermine the integrity of the patent system. It is essential for all stakeholders to work together to prevent such abuses and ensure that the patent system serves its intended purpose of promoting innovation and development.