Many years ago, a patent attorney mentioned that he’d just filed a patent for a box containing the following combination of known features:
- no. 11 spanner;
- 4mm Allen key; and
- short Philips screw driver.
It’s not easy to protect a new food recipe. How can patents, design registrations and trademarks help?
Let’s take the McDonald’s Big Mac burger. The name BIG MAC is a registered trademark. So, no-one can use a mark confusingly similar to BIG MAC when referring to foodstuff. But, McDonald’s trademark cannot prevent others from using the word “BIG” in a “normal way”. So, if you make a big burger, you may call it a BIG BURGER.
Business method patent
It is difficult to protect a business idea. The South African Patents Act specifically excludes “a method of doing business” from being patented.
Below are examples of business methods that cannot be protected by patents:
- a new restaurant specialising in Dutch / Austrian fusion cuisine;
- a new bar in Sandton that serves only Umqombothi beer and dried Mopane worms;
- a new pawn shop adjacent the Shell garage on Louis Botha Avenue;
- a new shoe repair shop located at the exit of a mine;
- a new Latin dance class for ladies in Norwood’s old age home;
- driving lessons with instruction in Xhosa;
- selling flip flops via a cellphone app;
- a new insurance product covering loss of expensive pens;
- a new charity for supporting people with red hair;
- importing a new bubblegum from a US supplier into South Africa and selling it to teenagers via Cardies; and
- a new printer cartridge refill service with drop-off bins outside Pick ‘n Pays.
All the above may be good ideas for businesses, but they cannot be protected by a patent.
We are always surprised at how many people spend so much money filing software patents that are invalid.
Software patents in South Africa
According to our Patents Act:
anything which consists of a program for a computer shall not be an invention for the purposes of this Act … [this provision] shall prevent, only to the extent to which a patent or an application for a patent relates to that thing as such, anything from being treated as an invention for the purposes of this Act.
So what does this mean? (the wording is not exactly elegant)
Let’s take an example: A software developer wishes to patent an app that downloads the weather forecast for the day and suggests whether you should take a jersey or umbrella to work.
Reserve your right to protect your invention worldwide by filing a PCT Patent
A PCT / worldwide patent must be filed by the first anniversary of the filing date of your provisional patent. Although, this patent application will not result in a “worldwide registered patent”, it extends your right to file patents in 148 countries for a further 18 months, i.e. 30-31 months from the filing date of your provisional patent. During this period, you will also receive a patent search and examination report from an international Patent Office of your choice.
Select the most efficient worldwide patent filing firm
IdeaNav / S&Z ended 2014 as the most efficient worldwide patent filing firm in South Africa – filing more than 11 worldwide patents per patent attorney:
|Firm||PCT publications 2014||Efficiency index|
|IdeaNav / Sibanda & Zantwijk||23||11.5|
|Smit & van Wyk||15||7.5|
|Dessington de Beer||14||7|
|Edward Nathan Sonnenbergs||12||4|
|Hahn & Hahn||22||2.75|
|Spoor & Fisher||54||2.7|
|Adams & Adams||52||2.6|
Considerations when registering a trademark
Choice of word mark:
- The strongest trademarks are made up words, such as “PANADO” – it would be difficult for a competitor to motivate why they “need” to use a mark that is similar to this trademark.
Most South African patent firms require candidate patent attorneys to have an undergraduate degree in engineering from Wits, UCT, SU, UJ or UP – candidates with technikon / BTech degrees are only seldom selected.
We favour engineers with mechanical or electrical university degrees.
Tips on how to trade mark your name or logo in 5 easy steps:
- Select a mark that is not descriptive (e.g. “Cape Town Grocer”). The best is a made-up word, such as “Kodak”. Alternatively, a word that is not usually associated with the product (e.g. “Apple” for computers). Call us to discuss the appropriateness / suitability of your mark with an experienced trade mark attorney – we will give you objective advice.
A trade mark registration prevents others from using a mark that is confusingly similar to your registered trade mark.
You can file a trade mark for the following:
- a WORD (e.g. “Nike”);
- a LOGO (e.g. the Swoosh); and
- a PAY-OFF line (e.g. “Just Do It”).
Protect your brand, name or logo by filing a trademark in South Africa. The process is quick and simple:
- whether your mark is sufficiently distinctive – a descriptive mark (e.g. Norwood cycle shop) will likely be rejected by the South African trademark registrar;
- the classes in which your trademark should be filed; and
- whether filing separate trademarks for your word mark, logo and pay-off line is appropriate.
For example, see the Nike marks below. They cover the word mark NIKE, the SWOOSH logo and the pay-off line JUST DO IT:
To file a patent is a process. How you go about filing a patent depends on whether you intend to secure a patent in South Africa only or whether you intend to file patents in three or more countries.
To protect your invention:
- Start by calling a patent attorney to confirm that your invention is patentable – there is no use filing a patent for software, a game or a business method that is unenforceable. See our examples of “inventions” for which you cannot file patents. Note: we do not charge for chatting to potential clients over the phone. And, these discussions are confidential.
- Conduct a patent search to confirm that your invention does not already exist. Remember that less than 0.3% of patented products end up in the shops. Our cost to perform a professional international online patent search is fixed at R3,850. Estimated time: 3-4 business days.
- File a South African provisional patent for only R5,950 plus vat. Note: up until the date of filing a provisional patent, you must keep your invention secret. Any disclosures (apart from disclosures to patent attorneys) should be made under confidentiality agreements. Estimated time: 2 weeks.
- Within 12 months of filing the provisional patent either: (i) file a South African complete patent for R7,850 plus vat or file an international / PCT patent application for as little as R26,500. Estimated time: 2 weeks.
- Within 18 months of filing a PCT patent, file national phase patents in countries you intend to trade. See our foreign patent cost table for cost estimates to file patents in the most popular countries.
Forms to file a South African provisional patent
Fillable South African (CIPC) patent forms are freely available at IdeaNav. These forms include:
- Patent Form P1 – Application for a Patent and Acknowledgement of Receipt.
- Patent Form P2 – Register of Patent.
- Patent Form P3 – Declaration and Power of Attorney. Remember to strike out the paragraphs that are not relevant.
- Patent Form P6 – Provisional patent application cover page.
Using the IdeaNav patent forms will ensure that you complete only the required fields.
Contact Patent Office
The South African Patent Office (CIPC) is located at The DTI campus (Block F – Entfutfukweni), 77, Meintjies Street, Sunnyside, Pretoria (telephone: 086 100 2472).
In the past, one could visit the South African Patent Office (CIPC) to file patents and conduct a patent search through the South African patent records. However, although one can still drop patent applications in the box outside the Patent Office, the Patent Office is increasingly trying to convince applicants to file patents using the Patent Office’s online filing system. The Patent Office’s abstract card system is by now so inaccurate and incomplete that manual searches through the Patent Office patent records are highly questionable.
Patents are the most effective tool to obtain a monopoly. By filing patents in your trading countries, you will prevent others from making, importing, selling, advertising and using an infringing product in those countries. Your patents will effectively neutralise them – for others to be permitted to trade in those countries, they would need to secure a licence in respect of your patents.
Examples of our patents (click image to view patent):
A granted patent gives you the following rights:
- the right to prevent others from making a product that is covered by a patent claim;
- the right to prevent others from importing a product that is covered by a patent claim. Note: “exporting” is not an act proscribed by a patent. However, “exporting” presupposes that the person either “made” or “imported” the product (both of which are infringing acts);
- the right to prevent others from disposing of / offering to dispose of (i.e. selling, donating and advertising) a product that is covered by a patent claim;
- the right to prevent others from using a product that is covered by a patent claim; and
- the right to prevent others from exercise a method that is covered by a patent claim.
Africa has a total population (growing at +2.74% pa) similar to China, and a total GDP (growing at +5% pa) similar to India. However, Africa comprises 54 countries. So, where does one register a PCT national phase patent in Africa?
By registering only 4 African national phase patents, you can capture 77% of the total African GDP and just under two-thirds of the total African population.
|South African PCT national phase patent information|
|Cost of a South African patent:||US$ 585|
|Time to grant:||approx. 12 months|
|Filing deadline:||31 months from priority date, extendable on payment of a nominal fee to 34 months|
|Requirements:||All we require is your PCT / WO patent number. We will send you two Declarations and a Power of Attorney for signature. The original signed forms must be lodged. No legalisation is required|
|Prosecution:||The South African Patent Office does not examine patents. As such, there are no patent prosecution or grant costs. The US$585 filing fee includes all costs up to and including grant of the South African national phase patent|
|Amendments:||Amendments may be made after filing the South African national phase patent|
If you are approaching the 31 month deadline of your PCT patent, it is time to consider filing an ARIPO regional patent. This will secure protection over a large swathe of Southern Africa. But which ARIPO member countries should you select?
If you are approaching the 30 month deadline of your PCT patent, it is time to consider filing an OAPI regional patent. This will secure protection over a large swathe of Northern Africa.
Nigerian national phase patents may be filed up to 30 months from the priority date of the patent application. The typical cost to file a Nigerian patent is US$1,235 filing fee. See our Nigerian patent costing tool.
To file a Nigerian national phase patent, we are required to submit the following documents:
- details of the applicant;
- a Power of Attorney. Note that legalization or notarization is not required;
- a copy of the patent specification in English;
- a copy of the assignment (if any). Note that legalization or notarization is not required; and
- a certified copy of the priority document.
The Nigerian patent office does not examine the patent as to novelty or inventiveness. Provided the forms are in order, the patent will be granted. Once granted, the patent will remain in force for 20 years (with annual maintenance fees).
Nigerian patent law does not require marking. However, it is suggested that the applicant use the patent within Nigeria during a four year period of filing.
Patent Attorney – Paulo Lopes
Paulo Lopes is a registered South African Patent Attorney with a Masters Degree in Mechanical Engineering.
Paulo with son Joshua
South Africa patent
South African national phase patents may be filed up to 31 months from the priority date of the patent application. A further 3 month extension is available on payment of a nominal fee. The cost to file a South African patent is US$585. This covers all costs up to and including grant.
To file a South African national phase patent, we are required to submit the following documents:
- details of the applicant;
- original signed Forms P3, P26 and Power of Attorney, signed by the applicant. Note that legalization or notarization is not required;
- a copy of the patent specification in English; and
- a copy of the assignment (if any). Note that legalization or notarization is not required.
The South African patent office does not examine the patent as to novelty or inventiveness. Provided the forms are in order, the patent will be granted. Once granted, the patent will remain in force (with annual maintenance fees from the fourth year onwards).
South African patent law does not require marking or use of the patent within South Africa.
OAPI national phase patents may be filed up to 30 months from the priority date of the patent application. The OAPI patent filing fee is from US$2,690, together with a US$430 first year maintenance fee. See our OAPI patent costing tool.
An OAPI patent automatically covers:
Benin, Burkino Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal and Togo.
(See information about OAPI member states)
To file an OAPI national phase patent, we are required to submit the following documents:
- details of the applicant;
- a Power of Attorney. Note that legalization or notarization is not required;
- a copy of the patent specification in English or French;
- sequence listing (if applicable)
- a copy of the assignment (if any). Note that legalization or notarization is not required; and
- a certified copy of the priority document.
OAPI patents are subject to substantive examination. And, once granted the ARIPO patent results in a national phase patent in each of the member countries, which remains in force for 20 years (with annual maintenance fees).
OAPI does not require marking or use, leaving this to the national laws of the member countries. Enforcement of an OAPI patent is also regulated by the national laws of the member countries.
ARIPO national phase patents may be filed up to 31 months from the priority date of the patent application. The ARIPO patent filing fee is from US$2,735, together with a US$680 first year maintenance fee (presuming all countries are selected). See our ARIPO patent costing tool.
If one selects all the countries, an ARIPO patent covers:
Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia and Zimbabwe.
To file an ARIPO national phase patent, we are required to submit the following documents:
- details of the applicant;
- a Power of Attorney. Note that legalization or notarization is not required;
- a copy of the patent specification in English;
- selection of countries in which the ARIPO patent is to be extended
- a copy of the assignment (if any). Note that legalization or notarization is not required; and
- a certified copy of the priority document.
ARIPO patents are subject to substantive examination. And, once granted the ARIPO patent results in a national phase patent in each of the countries selected, which remains in force for 20 years (with annual maintenance fees).
ARIPO does not require marking or use, leaving this to the national laws of the selected countries. Enforcement of an ARIPO patent is also regulated by the national laws of the selected country.
IdeaNav and S&Z Patent Law Firm offers the best range of services to inventors in South Africa.
Our services include:
- Patent searching
- Prototype conceptualisation and industrial design
- Creating 3D CAD drawings
- Generating photorealistic product posters from 3D CAD drawings
- Prototyping (either using CNC or 3D printing technology)
- Drafting and filing South African provisional patents, PCT patents and foreign patents
- Drafting and filing South African and foreign designs
- Filing South African and foreign trademarks
- Drafting licences, R&D agreements and other IP commercial contracts
- Providing tax, exchange control and valuation advice relating to intellectual property
- Renewing patents online by credit card
You have come up with a great idea. But, how do you patent it? Don’t just rush to a patent attorney to draft and file a South African provisional patent. Protect your invention properly by following our 5 easy steps:
- Step 1: Identify the new feature of your invention. To do this, broaden your focus beyond your specific application and ignore the materials used. For examples of what not to do, see our article on common mistakes made. If you are unsure how to do this, call us.
- Step 2: Conduct a patent search to check whether your new feature is in fact new. Tip: use our patent search software, or ask us to conduct a professional online worldwide patent search for only R3,850. Our search reports include copies of relevant documents and our opinion as to which features should be patented.
- Step 3: Prototype your invention to: (i) confirm that it works; and (ii) develop further improvements for inclusion in your provisional patent – this will make your patent a lot more robust. Tip: ask IdeaPrototype to develop a working prototype for only R15,000.
The cost of a PCT / international patent depends on various factors, including:
- the patent law firm you engage to: (i) draft the PCT patent specification; and (ii) file the PCT patent;
- the status of the patent applicant – natural persons that are nationals and citizens of select countries qualify for significant discounts;
- the search authority selected to search and examine the PCT patent – only a few offices extend discounts;
- the number of independent claims in the PCT patent – we suggest limiting the number of PCT patent claims to one independent claim. This will also save you money during the national phase; and
- the number of pages of the PCT patent – try to limit the length of the patent specification to 20 pages.
The IdeaNav PCT Patent Costing Tool allows you to play around with the above inputs.
Then, press “Calculate” to see our fixed quote to draft and file the PCT patent – you will notice that our costs are at least 50% lower than other South African patent law firms! If the PCT patent is not amended during the 18 month PCT process, there will be no further charges until you decide to file PCT national phase patents.
Patentees are often surprised at how cheap and simple it is to file PCT national phase patents in Africa. Using Iptica – specialists in African patent, trademark and design filings – you can cover more than 70% of Africa for less than R100,000 / US$10,000 in filing fees (inclusive of R11,000 in first year renewal costs).
For the most “bang for your buck” in Africa, we suggest filing the following patents:
- an ARIPO regional patent (including Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia, Malawi, Mozambique, Namibia, Rwanda, Sierra Leone, Sudan, Swaziland, Tanzania, Uganda, Zambia, Zimbabwe);
- an OAPI regional patent (including Benin, Burkino Faso, Cameroon, Central African Republic, Chad, Comoros, Congo, Equatorial Guinea, Gabon, Guinea, Guinea Bissau, Ivory Coast, Mali, Mauritania, Niger, Senegal, Togo);
- a Nigerian patent; and
- a South African patent.
Why chose these national phase patents?
Firstly, both Nigeria and South Africa are non-examining countries – their patent offices do not examine the patent applications for novelty and inventiveness. There is, therefore, little to no patent prosecution costs. Iptica’s cost for a South African national phase patent includes all costs up to and including grant.
Before rushing to file a patent, inventors should first conduct an online worldwide patent search to confirm that their invention is “novel“. The databases are freely accessible, and easy to use.
A good option is to use the IdeaNav Patent Search tool. Alternatively, follow the steps below:
Step 1: Conduct an image search through the WIPO website
In the WIPO search field, select “English Text” – this gives you the widest scope – and enter essential features of your invention (without linking words with the boolean “and”). Then, click “Search”.
The aim is to reduce the number of search results to around 200. If your search returns too many results, go back to the search field and add another term.
Next, change the “List Length” to “200″. After the page has been refreshed, change the “View” to “All + Image”. You will now be able to scan through 200 patents extremely quickly.
Note down the relevant patent numbers, without viewing them through the WIPO search portal.
Step 2: View the relevant patents through the Espacenet website
“Boom! Zoom! … it’s the big smashup! …” – the opening words of Louis-Ferdinand Céline’s Guigno’s Band explains this best.
The OECD discussion documents published on 16 September 2014 will wreck most tax structures used by software developers. It is a body blow, head-butt and low-blow, wrapped in Theodora’s shroud and presented with a +1000 page Dear John letter.
Many of the proposals are so left-field, you can’t help admire them. The people who put this package together did a proper job, and then went the extra mile. This is Hobbes’ Leviathan unleashed. Google, Apple and Amazon are running the gauntlet over Tony Danza’s toe.
Previously, controlled-foreign-company (CFC) legislation was easily circumvented by earning business profits. Now, receipts from the remote sale of digital goods and services are regarded as “passive income”. That hurts!
Next, payments for the remote sale of digital goods and services attract withholdings tax. Winded!
And, if your sale of digital products is supported by independent contractor activities within a country, congratulations on your new “permanent establishment”. Salt!
This is not a sniper shot. It is a chamber of Zyklon-B – there’s no dodging it.
The simplest way to pay South African patent renewals is to do so online.
One option is to use our online worldwide patent renewal system. This system offers significant discounts on patent renewals. It also polices your patent by notifying you of newly published patents that may infringe your patent.
The alternative option is to:
- open an account with the South African patent office;
- deposit funds (in Rands) in to your account;
- download the renewal form P10 from the CIPC website;
- complete and return the renewal form to CIPC by fax;
- chase up renewal of the patent with CIPC; and
- diarise the next renewal date to ensure that your patent does not unintentionally lapse.
South Africa is one of the few countries that permit renewals to be paid more than 6 months in advance. Furthermore, the South African patent office has indicated that South African patent renewal fees will increase significantly in 2015. In addition to increasing the patent renewal fees, the patent office is expected to differentiate between “small” and “large” entities – levying a renewal premium on large entities. Accordingly, it is strongly suggested that patentees pay all their patents to term prior to the increase in renewal fees. To do this, simply: log on to the IdeaNav patent renewal system; input your South African patent number; when adding your patent to the cart, select “pay to term”; and pay for the renewal online using your credit card.
For years, we have warned against merely housing intellectual property (IP) in IP holding companies located in low tax jurisdictions. Our position has always been that merely parking IP in an offshore vehicle will not trigger any tax benefits. This principle has found clear expression in the 2014 Guidance on Transfer Pricing Aspects of Intangibles published by the OECD on 16 September 2014:
“While determining legal ownership is an important first step in the analysis, that determination is separate and distinct from the question of remuneration under the arm’s length principle. For transfer pricing purposes, legal ownership of intangibles, by itself, does not confer any right ultimately to retain returns derived by the MNE group from exploiting the intangible, even though such returns may initially accrue to the legal owner as a result of its legal or contractual right to exploit the intangible. The return ultimately retained by or attributed to the legal owner depends upon the functions it performs, the assets it uses, and the risks it assumes, and upon the contributions made by other MNE group members through their functions performed, assets used, and risks assumed. For example, in the case of an internally developed intangible, if the legal owner performs no relevant functions, uses no relevant assets, and assumes no relevant risks, but acts solely as a title holding entity, the legal owner will not ultimately be entitled to any portion of the return derived by the MNE group from the exploitation of the intangible other than arm’s length compensation, if any, for holding title.”
We are proud to have been selected by Iptica to manage all patent renewals throughout Africa.
Iptica focuses on intellectual property registrations in ARIPO, OAPI, Nigeria and South Africa, offering the most affordable national phase patent registration costs in these territories. Unlike other filing agents, that pass you on to a different agent for each African country, Iptica has engaged IdeaNav / S&Z to process and manage all African national phase patent applications to grant. This means that you will deal only with us. And, it ensures consistency across all your patent registrations within Africa.
We have been filing ARIPO and OAPI regional patents and Nigerian and South African patents for the past eight years. Over this period, we have identified strong firms in each African country, and built close relationships with them. All these firms have been tried and tested over a period of years.
The deadlines for filing PCT national phases within the main African territories are:
- OAPI: 30 months from the priority date;
- Nigeria: 30 months from the priority date;
- ARIPO: 31 months from the priority date;
- South Africa: 31 months from the priority date, extendable until 34 months on payment of a nominal fee.
Many inventors contact us for tips to draft and register their own patent.
Tip 1: Use our DIY provisional patent toolkit
This includes a template for drafting a provisional patent, and fillable patent forms for registering the DIY patent.
Tip 2: Move beyond the benefits
Most inventors get stuck on the benefits of their invention – it is cheaper, lighter, more rugged, “greener”, etc. The problem is that “benefits” cannot be patented.
To find whether a patentable feature exists, ask: “what feature did you add to the product to yield the benefit?” i.e. to make it cheaper, lighter, more rugged, “greener”, etc. – it is only these new features that you have added that may be patentable.
If your answer is: “I used a new type of plastic recently launched by 3M”; “I made it out of aluminium instead of plastic”; or “I made the connections stronger”, you have not added a new feature – the feature you are referring to already existed, and there is nothing to patent. The new feature you are adding cannot be a common substitute of an existing feature.
Remember: the benefits merely point you in the direction of the potentially patentable feature.
Inventors often ask us for advice on raising funding for their invention. Up to the end of 2013, the answer was easy – approach SPII to fund prototyping. At that stage, SPII was the only option. The simple reason is that early stage technology is extremely risky – way too risky for the average private investor.
Generally, venture capitalists (VCs) and angel funders (i.e. private investor funding) backs the team more than the invention. And, the only way properly to evaluate the team is through sales performance. The likelihood of obtaining VC funding at the prototyping phase is extremely low. These funders require you to show: (i) a product that is in the market; (ii) market demand (i.e. sales); and (iii) a small degree of profit. If your application is accepted, they will provide funding to take you to the next level, i.e. sales growth.
Since private funders are reluctant to support early stage development, Government agencies have taken up this baton. SPII was by far the best option available – requiring only an idea and a business plan with costings. In turn, SPII would provide a pure grant to support the inventor through design, prototyping, patent searching and provisional and PCT patenting – this is exactly what inventors wanted. The application process was as lean as one could reasonably expect, and approval took only a few months. However, SPII will unfortunately no longer receive further funding.
Before deciding on your brand and rushing to the South African trademarks office to register and protect it, we suggest first doing some basic homework:
- Check that the co.za (and other relevant domains) are available. To do this, go to WebAfrica.
- Check the CIPC trademark records to confirm that no confusingly similar mark is already registered. To do this, you will first need to open an account with CIPC.
- Check for conflicting company names on the CIPC companies database.
- If you intend to extend your business to the US, query the US Trademarks Office database, and filter out the “live” trademarks.
- If you intend to extend your business to Europe, query the European Trademarks Office database.
Alternatively, for only R2,500 (excl. vat), we will conduct a trade mark registrability search for you. Together with the trademark search report, we will provide our opinion regarding the registrability of your mark. Thereafter, filing your trademark will only take a couple of days.
If you have an idea you need to prototype, call us. We specialise in affordable prototyping. Our aim is not to design your product for manufacture. It is to determine whether your invention works and justifies further investment.
For examples of our prototypes, see IdeaPrototype.co.za. Choose our “full house” prototyping package for only R15,000!
When prototyping through us, you need not worry about anyone stealing your idea – our prototyping services are performed within the safe environment of a patent law firm. Before starting work, we sign confidentialities and assign all resultant intellectual property to you. And, at the end of the process, we advise you how best to protect your idea.
Budgeting is also easy, as our pricing for conceptual design, CAD drawings, 3D prints and photorealistic posters is fixed.
IdeaNav has extended their patent and design filing services to include trade mark registrations.
Sara Spiro, joined us in August 2014 – she was previously employed as a trademark attorney at Bowman Gilfillan and Edward Nathan Sonnenbergs. As with our patent, design and prototyping services, our trade mark pricing is the lowest in the industry. And, there are no hidden costs. For example, unlike most other firms, we do not charge an additional R800 upon trade mark registration.
Call us to discuss your branding and how best to protect it. That does not mean filing numerous trade marks. If one trade mark registration is sufficient, we will tell you. And, we will give you honest feedback regarding whether we consider your mark to be too descriptive. Ultimately, if you decide not to file a trade mark or conduct a search, we won’t surprise you with an invoice.
People do the strangest things to protect their idea. A few of the steps commonly taken are:
- Describing your invention in writing and posting the document to yourself by registered post. This is often described as the “poor man’s patent” or a “boere patent”. But, all you end up getting is a document in the post. It does nothing to protect your invention.
- Taking a photograph of your product and registering it as a trademark. Generally, this similarly gives you … nothing. Rather spend the money registering the name of your product as a trademark. Design registrations are meant to protect its shape.
- Taking a screenshot of your website and registering it as a design. Yes, this is also a waste of money. Copyright is meant to protect 2D works. Since the screenshot does not comprise a novel 3D article, the design is basically useless.
- Printing a set of technical drawings of your product, completing the patent forms and lodging the application at CIPC. Without a detailed description of your invention in writing, this application is worthless.
- Refiling provisional patents with CIPC every 12 months. Since provisional patents only reserve your right to file patents for 12 months, at the time of filing your most recent application, your prior applications become wholly irrelevant. You should file a complete patent by the one-year anniversary of filing your provisional patent. Else, you get nothing.
- Filing patents for products that exist elsewhere but that are not available / known in South Africa. Since you may only patent features that are “new” worldwide, your South African patent is invalid.
Undergraduate science (preferably, engineering) degree only. For more information on the requirements to qualify as a patent attorney, click here.
Recently completed undergraduate degree.
Additional studies while articled:
You will need to complete a law degree (4 years through UNISA), the patent exams (at least 2 years) and the attorneys’ board exams (1 year). All these run in parallel. It sounds like a mouthful, but is actually very manageable.
Period of articles:
3-4 years, but bank on 4.
Approximately R12,500 per month – way less than your friends that join engineering firms, I know. But hopefully the medium to long term rewards are worth this sacrifice.
Initially, candidate patent attorneys assist in conducting patent searches and reviewing / amending patents. After a couple of years, you will start preparing draft patents.
After completing your articles, LLB, board and patent exams, you will be a qualified patent attorney. After qualifying, most patent attorneys remain with patent firms. Some accept positions as in-house patent counsel at Universities / large corporates, and others join funding agencies (e.g. TIA).
If you have a mechanical, metallurgical, civil or electrical engineering degree and are interested in becoming a patent attorney, please contact us.
We do not patent the following ideas, because that would just be wrong:
- Recipes – a new formula for a low calorie or energy drink or a new topping for a pizza typically cannot be patented or protected by copyright. There is nothing inventive here. Anyone can make Coca Cola (Virgin, Pick ‘n Pay no name brand, Pepsi and many others did). Try keep the formula secret (using confidentiality undertakings) and generate a reputation in the “brand” (protected by a trademark). It works for Coke (which happens to have a 100 year history and a massive marketing budget).
- TV show – a script for a tv or reality show or an idea (with character names) for a cartoon series is protected only by copyright, albeit very ineffectively until the show is recorded. Ideas for tv shows cannot be patented. Only trademarks are effective here – try launch another “Survivor” type reality show under a different name. It won’t be easy. Viewers want the “real deal”.
- Business methods – You cannot patent the idea of opening a fried chicken franchise next to the Killarney taxi rank or the concept of offering billboard marketing services to the burger industry. Even copyright won’t help you here. Consider relying on confidentiality undertakings, but these are only enforceable for as long as the idea remains secret (which won’t be long).
- Websites – Don’t patent your new website. Even FaceBook and EBay are not patented. Websites are protected only by copyright, but this will not prevent others from “developing” (without copying) a site that is similar to / does the same thing as yours. Again, consider trademarks.
- Software It is unlikely that your new software can be patented. Microsoft Word is not patented. We don’t even consider patents when developing our suite of software tools. Some patent attorneys are quick to conclude that a software program has a “technical effect”, but we are seldom convinced. If you have a software invention, contact a patent attorney in the US or Europe (not South Africa) that specialized in software patents. We do not dabble in this field.
- Games – A new method of playing a game on a tennis court / playing indoor soccer cannot be patented. Your only option is to create a brand for the game and protect your rights in the brand through a trademark registration.
But, if you have developed a product with a “new feature”, we would be glad to patent that feature for only R5,950 plus vat. Get started by giving us a call.
IdeaNav now offers product prototyping services through its new prototyping website IdeaPrototype.
If you have an idea, come visit us to:
- protect your idea;
- create 3D drawings, photorealistic posters and movies of your invention; and
- rapid prototype your product.
We will convert your idea into an alluring product designed to attract investors.
Most ideas can be protected. New features can be protected by a patent; a new shape can be protected by a design; a written document / drawing / photograph can be protected against copying by copyright; and your brand can be protected by a trademark.
Basically, if you can point to a feature on your product that is new (without having to explain its “new” purpose), this feature may be patentable. Patents are your best form of protection. As, a patent will prevent others from adding that new feature to their product. If you think that your idea is patentable, call us. Any disclosures made to patent attorneys are protected by law and are regarded as confidential.
Trademark attorneys are increasingly advising registration of 3D trade marks. Traditionally, if I designed a new soap dispenser, I would typically:
(i) approach a patent attorney to identify new technical features that may be patented;
(ii) discuss with my patent attorney filing design registrations to protecting the shape of my dispenser; and
(iii) protect the name of my dispenser with a trade mark registration.
However, inventors are now commonly advised additionally to take a photo of their product and to register its shape as a trade mark. In our opinion, this is futile. 99.9% of the time this trade mark registration will be useless. Sure, Coke protected the shape of its bottle by way of a trade mark registration, but that is because whenever one sees a drawing of a Coke bottle, they immediately think of Coke – the shape has, over a long time and after much advertising, become a “badge of origin”. But, this will likely not happen to 99.9% of products.
Our advice is don’t waste your money on 3D trade mark registrations. Rather rely on the form of protection that is specifically meant to protect shapes – design registrations.
You can register your logo or brand directly with CIPC without first conducting a trade mark registrability search. However, you may find out 14 months later that your application has been refused due to a conflicting, pre-existing mark on the trade mark register. Not only will this pose an obstacle to you acquiring any enforceable rights in your trade mark, but it may also require you to rebrand your product / service.
To mitigate this risk, we suggest conducting a trademark registrability search before filing a trade mark application.
Our charge to conduct a search and file a trade mark is R2,500 (excl vat) and R3,450 (excl vat), respectively.
Anthony van Zantwijk – expert IP valuator
Qualifications and background:
BSc (Civil) Engineering, LLB cum laude, LLM (Tax), FSAIIPL
Registered patent attorney, registered tax practitioner and IP valuator
About me: I am an intellectual property attorney with more than 15 years’ experience in negotiating, structuring and drafting international IP commercialisation transactions for many of South Africa’s multinational companies. This provides contextual insight to valuations, an understanding of the commercial rationale behind transactions, and a “gut feel” of what persons acting at arm’s length would have agreed upon. Combining this with experience at the South African Revenue Services (tackling structured finance transactions, assisting in transfer pricing investigations and challenging IP Capital Gains Tax valuations); South African Reserve Bank (investigating IP exports); and Treasury (amending the Income Tax Act with a view to relax Exchange Controls), offers a unique 360 degree perspective of the IP valuation landscape. IP valuation is not academic. An expert IP valuator needs to understand IP, commercial considerations and regulatory issues – one cannot merely “benchmark” royalties / valuations. Each IP valuation must make sense within its environment.
South African Patents Act no. 57 OF 1978 (with comments)
(as at 1 January 2015)
In this Act, unless the context otherwise indicates:
If you have an idea, and wish to protect it, start by filing patents in South Africa.
A South African provisional patent application reserves your rights to file patents (practically) worldwide for a period of 12 months. And, it only costs R5,950 (exclusive of vat). Once you have filed the SA provisional patent, you can market, sell and tell people about your invention (without requiring them to sign confidentialities).
Try our online patent renewal system. It is safe and simple to use. And, you will save on patent renewal fees.
We have designed our renewal system to ensure that you cannot make mistakes:
- you insert only your patent number. No further information is required;
- the system displays an image of your patent to confirm that the number you inserted is correct;
- the system extract the filing date, title, applicant detail etc. from patent databases;
- the system performs automatic background tests to ensure that the filing date extracted is correct; and
the system will send you automatic renewal reminders by email.
Many people overpay for patent annuities. We manage over 1,500 patents worldwide for more than 100 users, offering the most affordable renewal fees to South African patentees.
Using our online patent renewal system will save you between 30% and 70% on patent annuities, depending on the country. And, as patents are added to our system, our pricing will continue to reduce.
Have an idea? Give us a call. Discussions with patent attorneys are protected by law. And, we can quickly give you suggestions on how best to protect your invention.
Basically, if you can point to a “feature” on your product, and that “feature” was not previously known anywhere in the world, the chances are it can be patented. This will prevent others from adding the same feature to their product … even if they combine it with 1,000 other features.
It is simple and affordable to file patents in South Africa.
To file a South African provisional patent typically takes two weeks and costs R5,950 plus vat. To start the process, just call us to confirm that your idea is patentable. We vet more than five inventions each day, and all disclosures to our patent attorneys are confidential.
Below are a few common “ideas” that fail our patent vetting process:
Before registering intellectual property for an idea, consider the various forms of intellectual property rights available – patents, designs, trade marks and copyright.
In broad stokes, patents protect the underlying concept of how an invention works, whereas designs protect the way an article looks. Consider cell phones: a patent protects the technology that enables users in remote locations to communicate with one another, while a design protects the shape of the handsets.
For a patent to remain enforceable, patent renewals must be paid annually throughout its term. With the term of patents being a lengthy 20 years, many patents are allowed to lapse due to the accumulating effect of high patent renewal costs.
But what if the cost of patent renewals could be reduced? A common misconception is that patent holders are locked into paying renewals through the patent attorneys originally responsible for preparing and filing the patent. This is not true. You can shop around for competitive patent renewal pricing.
Can you patent your idea? The first question we typically ask is:
“Can you, without explaining anything about your product or its application, point to a feature that is new?”
It only costs R5,950 (exclusive of vat) to file a provisional patent in South Africa.
In 12 months time, you can file a PCT / international patent application at a cost of only approx. R24,000.
Fortunately for inventors, the patent registration process in South Africa is one of the simplest, quickest and cheapest in the world.
But, start off by doing your homework properly: search through the online patent databases to check that the feature you have invented is in fact new worldwide. If you are unsure how to begin, call us and one of our patent attorneys will point you in the right direction – confidentiality guaranteed.
A PCT / International patent is generally filed 12 months after filing your South African provisional patent application. It can cost as little as R24,000 and reserves your right to file patents in nearly all countries of the world for a further 18 months, i.e. a total of 30 months from the date of filing your provisional patent.
To save costs, consider filing the international patent in the name of an individual who is both a South African resident and national, as they are entitled to substantial rebates. Filing the patent in the name of a company increases the cost from approx. R24,000 to as much as R48,000.
Our patent agents / attorneys vet more than five inventions every day. If you are in South Africa – whether in Cape Town, Durban, Pretoria or Johannesburg – our patent attorneys can assist you.
Start by calling us and discussing your idea for free. More than 90% of inventions prove not to be patentable. So, make sure you conduct a proper search before committing to the patent process.
Although, we meet with inventors from Randburg, Hatfield and Centurion, our systems are set up to communicate with the majority of our clients remotely – see the comments on our testimonials page relating to patents filed on behalf of clients we have never met in person.
Our patent attorneys include Paulo (MSc (Mechanical) Engineering (Wits)), Anthony (BSc (Civil) Engineering (Wits)) and McLean (MSc (Metallurgical) Engineering (Wits)), and our drawings are prepared by our industrial designer Wikus (NDip (Design) (UJ)).
We guarantee the most affordable patent services available in South Africa at a fixed price.
The process from idea to patent is easy. Give us a call and we would be glad to explain it.
Have lots of ideas? Thinking of patenting them? Spend some time performing a patent search for each idea. This will quickly filter out those ideas that are not worth pursuing further.
You have three options: (i) use the links to the free online patent databases on our website; (ii) try our patent search software; or (iii) ask us to conduct a professional international patent search for only R3,850.
Kan jy jou idee patenteer? Die eerste vraag om te vra is: “Kan jy, sonder om enige iets oor jou produk of die gebruik daarvan te verduidelik, na ‘n kenmerk of eienskap verwys wat nuut is?”
“Nuut” beteken dat die kenmerk of eienskap nog nooit vantevore beskryf of geteken was op enige manier, of enige plek in die wêreld nie. Byvoorbeeld: verbeel jou jy het ‘n werkskoen ontwerp vir myners, met ‘n staal plaat in die hak. As jy na die plaat verwys, sal dit jou dalk herinder aan ‘n klopdans skoen. As ek ‘n klopdans skoen vind met ‘n soortgelyke plaat, is die kenmerk of eienskap nie “nuut” nie. Of myners dans of nie, is nie van toepassing in die geval nie. Moet egter nie hier opgee nie. Die volgende stap is om te kyk hoekom die plaat in die klopdans skoen nie geskik is vir jou doeleindes nie – die veranderings benodig vir die werkskoen en plaat kan dalk “nuut” en patenteerbaar wees.
Om te begin moet jy op die regte pad kom deur jou idee aan ‘n deskundige voor te stel. Ons gaan elke dag meer as vyf idees na en omdat ons patent prokureurs is, kan jy vrylik jou uitvinding aan ons oorvertel – die patente akte vereis dat ons alle inligting vertroulik hou. Hierdie stap filtreer gewoonlik 90% van alle idees uit omdat hulle nie patenteerbaar is nie.
Daarna is dit nodig om ‘n patent soektog te voltooi. Jy kan dit self doen deur ons databasis en sagteware op ons webblad te gebruik, of jy kan ons aanstel om ‘n professionele patent soektog verslag op te stel vir R3 850.
Slegs daarna is jy gereed om ‘n provinsiale patent voor te berei. Om voorlopige patente te registreer kos R5 950 (belasting op toegevoegde waarde (VAT) uitgesluit) en verseker jou reg om patente wêreldwyd te registreer vir een jaar. Jy kan hierna vrylik jou idees aan ander mense oordra, jou produk bemark, maak en verkoop.
Die proses van jou idee te bespreek, die patent soektog op te stel en om ‘n voorlopige patent te registreer duur gewoonlik tussen twee en drie weke. All wat nodig is om te begin is om ons te bel of ‘n e-pos te stuur wat die kenmerke of eienskappe van die uitvinding puntsgewys beskryf (met ‘n skets as dit beskikbaar is). As jou idee nie patenteerbaar is nie sal ons geen onkostes eis nie.
No place is easier or cheaper for obtaining a patent than South Africa. You can within two weeks file a South African provisional patent application for only R5,950 (excl. vat). This will reserve your patent rights worldwide for a year. And, unlike most countries, you need only pay a filing fee of between R4,950 and R7,950 (excl. vat) to obtain a granted South African complete patent, i.e. a patent that you can enforce against competitors.
The reason that South Africa is so affordable is that our Patent Office does not examine patents. Provided that your complete patent was properly filed, it will be granted in about 9 months time. And, annual patent renewal fees are only +-R600 (as compared to about R2,500 for most other countries).
This means that you can accurately budget your South African patent costs. It need not empty your pocket.
However, if you do not select a fixed-price patent service provider or reach agreement regarding a capped fee, your patent costs are extremely elastic – anywhere from R5,950 to R25,000 for a provisional patent, from R7,950 to R30,000 for a complete patent, and from R24,000 to R100,000 for a PCT / international patent.
But the biggest saving that you can make is not filing patents if you don’t have anything patentable to start with. You can search patent databases online for free. But, if you would like us to conduct a comprehensive online international patent search, our charge is R3,850. Between vetting inventions over the phone (for free) and conducting patent searches, we typically filter out 90% of inventions that inventors would otherwise have wasted money patenting.
For free, confidential advice over the phone, feel free to contact one of our friendly patent attorneys.
As a first time inventor wishing to file a patent application, how do you choose from all the patent lawyers?
The best way is to find out what his previous clients had to say. Was the standard of service high? The work efficient? The fee reasonable? Especially where a service is being offered at an hourly rate, how much will you end up paying?
Unlike most patent firms, our pricing is fixed. So, it is clear know how much you will spend at each stage. And, see our clients’ comments on our testimonials page (accompanied by names and websites details). If you like, contact them.
Next, give the patent lawyer a call. They are bound by law to retain all your invention-related information confidentially. By sound-boarding your idea over the phone with a patent lawyer, you will receive valuable tips and be able to gauge whether he is a person with whom you would like to work. And, this should not cost you anything.
However, if you are uncomfortable disclosing you invention over the phone, most patent attorneys will happily arrange a consultation, but this is normally associated with a fee. But, should your invention pass our simple vetting process, we offer a one-hour consultation without charge.
Since patenting is a process, your relationship with your patent lawyer should be open – you should feel free to phone him to clarify issues without fearing an invoice in the post. Our aim is to help you make your invention a success. And, we guarantee honest, direct advice. If your invention is not inherently patentable, we will be the first to tell you.
Patent registration in South African is affordable and easy. A South African provisional patent costs only R5,950 (excl. vat) and takes less than two weeks to file. It starts off with a simple, confidential phone call to a patent attorney.
In 12 months time, consider filing a PCT patent to reserve your patent rights internationally. This can be done at a cost of +-R25,000.
If you are a foreigner selecting countries in which to extend your patent at the end of the PCT phase, South Africa should be a default selection (costing US$585 – our all-inclusive fee). The deadline for lodging South African national phase patent applications is 31 months from the earliest priority, extendible on payment of late lodging fee by a further 3 months. There are no additional charges for multiple priority claims, excess pages, surplus claims or translations if the specification is in English.
Furthermore, the South African Patent Office is a non-examining Patent Office and will allow a patent application to proceed to grant as long as the formal requirements have been complied with. In the absence of voluntary amendment, a patent application will in most cases be accepted and granted with the original specification within about 12 months from the date of entering the national phase in South Africa.
South Africa remains the commercial gateway to the rest of Africa. And, to obtain patent protection in 34 African countries, you need only file three patents – South Africa, ARIPO and OAPI. There is no simpler or more cost effective way to secure patent coverage in such a large emerging market.
As patent attorney, we interact with many inventors from Cape Town – many of them associated with the wine industry.
Some of the more exciting inventions originating in Cape Town relate to fermentation techniques or techniques to remove alcohol from wines. However, more frequently, the inventions relate to recipes. The problem with recipes is that, for them to be protected by patent, the combination of ingredients must yield an unexpected technical benefit other than simply change the taste. For example, it must preserve the wine for longer or make it more resistant to fluctuations in temperate.
Where there is no unexpected technical benefit, rather focus on marketing your product to raise the reputation in the brand, and protect the brand by way of trademark registrations. A reputable brand, such as Spier or Nederburg is typically more valuable than any patents or designs they may own.
Although we are based in Johannesburg, our systems are geared to service inventors in Cape Town. And, many of the comments on our testimonials page come from clients in the Cape.
Do you often come up with ideas that are “the next best thing since sliced bread” and then wonder “how to patent my idea”? If so, you are likely a serial inventor.
If you are a serial inventor, beware not to fall blindly in love with your idea at an early stage. Step back from your idea and evaluate it objectively.
The first step is to conduct patent searches. You may not have seen your invention in the stores or on alibaba.com, but have you searched the international online patent databases? Either use the free search tool and search manual available on our website or contact us to conduct a professional patent search on your behalf for R3,850.
If the results of the patent search are positive, build a basic prototype to prove that your idea works. And, if it does, let the love affair begin.
The next step is to file a provisional patent for R5,950. This will allow you to disclose your idea to potential funders and manufacturers. And, for the next 12 months you can focus solely on converting your idea into a product and taking the product to market. This is where the real work starts, but it is an exciting journey.
Our free template confidentiality agreements have been upgraded.
To conclude a non-disclosure agreement, you now need only to:
- select one of our 10 template NDAs;
- complete the NDA online;
- print; and
- sign it!
IdeaNav has released a new online patent renewal tool that will save you up to 70% on patent renewals / annuities / maintenance fees!
National phase patent applications – where to file? This is a dilemma faced by applicants during the PCT national phase entry, 30 months after the priority date of the PCT patent application.
Firstly, you must decide whether to focus on countries of manufacture or countries of sale. Typically, it is best to focus national phase patent applications on countries of sale – you can corner 80% of the potential market by filing a handful of patents and spending about US$25,000. Early on, we must accept that certain territories will remain unprotected, but their low volumes will keep your major potential competitors at bay.
To register a patent in South Africa is surprisingly simple, quick and affordable.
But, before contacting a patent attorney, we suggest that you conduct a patent search to identify the features of your invention that have not previously been disclosed anywhere in the world. Our charge for conducting a professional patent search is R3,850.
Exchange Controls were amended on 8 June 2012 to prevent the assignment of intellectual property by a South African “resident” to a foreigner without the consent of the South African Reserve Bank. The cession of patents as security in favour of foreigners is similarly restricted.
This amendment drags us back to the position that existed before the Oilwell case. However, assignments effected before 8 June 2012 remain unaffected by this amendment and any transaction concluded in contravention of this amended Regulation 10(1)(c) is more probably not null and void “ab initio” (i.e. “from the beginning”).
Click here for a copy of the amendment.
Our patent reviews are proving extremely popular with inventors who wish to draft their own provisional patent application using our toolkit. So, time for some more info re this offering:
You cannot copyright an “idea” in South Africa or elsewhere.
Copyright does not arise when you have the “idea”. You must first reduce that “idea” to a “material form” (e.g. write it down, draw it, record it), and it is that material form (otherwise known as a “work”) that is protected by copyright.
Sibanda & Zantwijk Patent Attorneys has launched a new website focussing on its interactive resource library. The site contains articles with frank commentary on intellectual property tax, exchange control, valuation, structured finance and commercialisation.
To patent an idea in South Africa is surprisingly affordable and quick.
Our charge to prepare a provisional patent application; draft the patent drawings; arrange the patent application forms; and file your provisional patent application at the South African patent office is R5,950 (exclusive of VAT). Should you wish us to conduct a patent search before commencing with the provisional patent, our charge for doing so is R3,850.
In response to the support we received and the unexpected growth of MyPatent, we have significantly increased our investment in this business.
IdeaNav has launched a free online patent search tool for South African inventors.
The software interrogates all major international patent search databases, extracting useful patent information, taking screen dumps, and creating comprehensive patent search reports.
the IdeaNav Patent Search tool is available for free, and registration is only required if you wish to to create patent search reports.
Use our patent search tool, and let us know what you think.
The executive of the Technology Innovation Agency (TIA) has been decimated. They left it to Ela Romanowska – one of the last remaining members of the “old guard” – to switch off the lights. After a purge as exciting as that which followed Polokwane, the dust is finally settling around the behemoth of South African technology funders.
To register a provisional patent in South Africa takes approximately 2 weeks and costs R5,950 (exclusive of VAT).
The III – an organisation that has assisted inventors since 1974 – has been given a shot in the arm with a R1m grant from the IDC.
Unless you bought one from Iluba.
JJ Viljoen, the managing director of one of our clients, Iluba gave us a bunch of Iluba preserved roses more than two years ago. With the occasional dusting, we continue successfully to pass them off as “fresh”.