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Journal of Intellectual Property Law & Practice, 2014, Vol. 9, No. 10

The draft national Intellectual Property Policy
proposals for improving South Africa’s patent
registration system: a review
Caroline B. Ncube*
Background

*
1

Email: caroline.ncube@uct.ac.za.
General Notice 918, Government Gazette 36816 (4 September 2013).

# The Author(s) (2014). Published by Oxford University Press. All rights reserved.

The author
† Caroline B. Ncube is an Associate Professor at the
University of Cape Town.

This article
† This article discusses South Africa’s draft Intellectual Property Policy proposed reforms. It considers how these may be practically implemented. In
particular, it focuses on the phased sector specific
introduction of substantive patent examination,
possible co-operation with other national or regional
patent offices to enhance examination capacity, the
retention of non-examination for utility or secondtier patents and the involvement of third parties
in the examination process. It also considers the reintroduction of opposition proceedings to further
strengthen the patent system.
† The article points to other jurisdictions that have
implemented some of these options such as Australia’s utility patent system, the successful implementation of the peer-to-patent project in countries such
as the United States (USA) and the United Kingdom
(UK) and opposition proceedings in Europe, the UK
and Australia. It concludes that these are plausible
and viable options that should be further explored
for adaptation to the South African context.
† The article will be of interest to those following
policy and legislative developments in the developing world and particularly Sub-Saharan Africa,
where change often begins in South Africa then
extends throughout the region as neighbouring
states follow South Africa’s lead.

exclusively on South Africa’s patent application process. Suffice it to note that s 25 of Patents Act 57 of
1978 provides that, to qualify for patent protection, an
2

South African (SA) Draft IP Policy (2013) 32.

doi:10.1093/jiplp/jpu158
Advance Access publication on 12 September 2014

Downloaded from http://jiplp.oxfordjournals.org/ by Nicoleta Rodica Dominte on May 16, 2016

This article considers the reforms to South Africa’s
patent registration system suggested in the draft national
intellectual property policy.1 After approval by Cabinet,
the policy was released for public comment in September
2013 for a period of about six weeks. It was then expected
that the Department of Trade and Industry would issue
a document summarizing the comments received shortly
thereafter and lead further public debate before proceeding to the necessary steps to finalize the policy. Civil society
groups such as the Treatment Action Campaign, Section
27 and Me´decins sans frontie`res led public marches
across the country, calling on government to finalize
the policy before the national and provincial elections,
which were held on 7 May 2014. These efforts were
unsuccessful and it is unclear when the next steps will
be taken.
The draft policy recommends that ‘South Africa
should adopt a multifaceted approach in as far as registration of patents is concerned; that is use the depository
(registration), substantive search and examination and
the utility patent systems’.2 The draft policy does not
provide details of how such recommendations may be
implemented. This article considers the merits of these
recommendations and how they may be implemented. In
addition to the draft policy’s recommendations, it also
considers the introduction of patent opposition proceedings and a peer review mechanism to support patent
office examination efforts. It proceeds on the basis that
these options are worth considering whether or not the
Draft IP Policy’s stance on the effect of the current depository or registration system is correct. If it is correct, then
the country urgently needs to consider ways of remedying
the situation. If it is incorrect, and minimal or no harm is
being caused by the current system, there is nonetheless
room for improvement as no system is faultless.
An overview or discussion of patentability requirements is beyond the scope of this article, which focuses

9 This will necessitate substantial financial investment in capacity building over a medium to longterm period to generate a pool of suitably qualified local patent examiners. namely the introduction of substantive examination. the patent claims may be so broadly drafted that the patent holder obtains an unjustifiably wide monopoly which adversely affects the relevant industry and market. above. 5. The danger of such collaboration is that it may result in South Africa’s patent office being compelled by necessity or subtly influenced to adopt the patent position of the 7 8 9 10 11 12 Pouris and Pouris. The depository system and its shortfalls 3 4 5 6 1978 Patents Act.org/ by Nicoleta Rodica Dominte on May 16. Substantive examination The introduction of substantive examination may eliminate or reduce the problems caused by the depository patent system.oxfordjournals. In some cases these corrections or amendments are only effected in the examining jurisdictions and not in the non-examining ones such as South Africa. SA Draft IP Policy (2013) 31.5 Many patent applicants file the same application in several jurisdictions. Muhammed Vally. it could be used as a permanent solution. as noted by the draft national IP policy. South Africa could collaborate with the African Regional Intellectual Property Organization (ARIPO). n 4. 2016 Patent applications may be lodged domestically at the Companies and Intellectual Property Commission (CIPC)’s patent office or may be filed internationally under the Patent Co-operation Treaty (PCT) system. all procedurally proper patent applications are granted. Ncube . The draft national IP policy notes that currently South Africa is contracting out substantive examination ‘for patents registered under the PCT system’. including those that constitute excluded subject matter or do not meet patentability criteria (‘subpatentable inventions’).8 To minimize or eliminate these ARTICLE . Frank Joffe and Theo du Preez. South Africa’s depository patent system is disadvantageous and is considered a major weakness for four main reasons. There are other possible collaboration partners.6 Thirdly. the system requires competitors and other interested parties to bear the expense of monitoring patent registrations to reduce the risks of some patent holders gaining an unlawful or inequitable advantage by holding patents for undeserving inventions. Pouris and Pouris. ‘Is South Africa a Patently Attractive Jurisdiction?’ (2011) 4(11) Enterprise Risk 24. This could be a temporary arrangement while South Africa develops the necessary human and other resources to carry out its own substantive examinations. above. For example. The draft national Intellectual Property Policy proposals invention must have novelty. the patent holders are granted a monopoly in sub-patentable inventions when they have not provided any benefit for society. with similar adverse effects. even where the patented invention meets patentability criteria. 823 disadvantages.10 This suggestion has been taken up in the draft national IP policy. 32. First. this article discusses three suggestions for reform. the system may hinder future research and development in some fields. SA Draft IP Policy (2013) 31. the European Patent Office (EPO). In such instances. Ibid. However. s 43B. with South Africa designated as one of the states in which patent protection is sought.11 Such collaboration would entail South Africa outsourcing substantive examinations to another patent office. the lack of substantive examination means that errors in patent specifications go undetected.4 Secondly. ‘Patent Delay Costs’ (2008) Juta’s Business Law 29. Substantive examinations. It has been suggested that these capacity problems may be alleviated by collaboration between South Africa’s patent office and patent offices or organizations that currently undertake substantive patent examination.12 An openness to further future collaboration can be read into this statement.Caroline B. will ensure that sub-patentable inventions are not patented. an inventive step and industrial application. if properly undertaken. the US Patents and Trademarks Office (USPTO) or the United Kingdom’s Intellectual Property Office (UKIPO). including a mix of examining and non-examining patent offices. Any errors or overly broad claims will have to be corrected or narrowed down before an examining patent office will grant a patent. A related point is that. Downloaded from http://jiplp. through opposition. the introduction of a second-tier patent system and the enhancement of third-party intervention procedures. revocation and expert or peer review.3 South African patents are issued after a procedural examination for compliance with formalities. Alternatively. No substantive examination of patent applications is undertaken. Anthipi Pouris and Anastassios Pouris ‘Patents and Economic Development in South Africa: Managing Intellectual Property Rights’ (2011) 1 South African Journal of Science 29. introducing substantive examination will raise capacity problems because of the lack of personnel with the requisite skill and experience to do a proper job. 9. 6. Ibid.7 Finally. n 4.

Vol. 2014. ARIPO has severe patent examiner shortages and Kenya currently only has eleven patent examiners in office. Frederick Otswong’o and Cleopas Ojode ‘Patent Examination System in Kenya’. if South Africa introduces substantive examination.int/edocs/mdocs/mdocs/ meaningful third-party intervention. it may be prudent to seek a solution that does not require South Africa’s patent office to rely on other patent offices. All South Africa would have to do is select a patent office with a substantially similar patenting approach. Afro IP Blog (28 February 2013). These options are discussed further below. Yet these systems do not test the utility of inventions before giving out the reward of monopolistic exclusionary rights.15 In view of these potential problems.22 It is appropriate to limit the duration of protection out of recognition of the lower quality of inventions in this way. Second-tier or utility patents Second-tier patent protection systems are intended to provide protection for sub-patentable inventions. ARIPO.21 For example. SA Draft IP Policy (2013) 32.nspreview. Catherine Tomlinson. this danger may be averted through the prudent choice of patent office partners. it would be useful to enable more Journal of Intellectual Property Law & Practice.16 Therefore.com/2013/02/africa-ip-forum2013-reflections-david. due to the challenges faced by examining patent offices. see Peter Drahos. Available at http://www. Cyberlaw III @ SA the Law of the Internet in South Africa (3rd edn Van Schaik Pretoria 2012) 123. 20.19 They differ from standard patent protection with respect to the protected subject matter. WIPO Workshop on Utilizing External Examination Results. 10 . are generally ‘underpaid and overworked’. A third-party opposition or peer review mechanism is a credible option because it avoids the reliance problems that may result from outsourcing substantive examination to other patents offices. For example.org/2012/11/20/people-before-patents/ (accessed 25 May 2014). Downloaded from http://jiplp. Available at http://www. ‘People Before Patents’ (2012) 4 NSP Review. Technology and Patentability’ (2006) Journal of Contemporary Roman Dutch Law/Tydskrif Vir Hedendaagse RomeinHollandse Reg (THRHR) 122. 14 Caroline B.org/ by Nicoleta Rodica Dominte on May 16. Generally. Available at http://afro-ip.blogspot. One way to do this is to limit substantive examination to certain priority fields of science and technology such as pharmaceuticals under the existing standard patent system. It simply issues patents for untested inventions. For example. in leading economies such as the USA and Europe.18 In addition. Second-tier patent systems usually grant patent protection for a relatively short time ranging from eight to 15 years. It has been shown that patent examiners. care would have to be taken to ensure that patent examiners have reasonable workloads. Ibid. Graham Dutfield and Kit Boey Chow (eds) Innovation Without Patents: Harnessing the Creative Spirit in a Diverse World (Edward Elgar Cheltenham 2007) 19. The following paragraphs briefly outline the 16 17 18 19 20 21 22 en/wipo_ip_hre_12/wipo_ip_hre_12_ref_tbc1kenya. It would also be beneficial to partner with a jurisdiction with a similar socio-economic landscape and a common policy perspective. 15 David Cochrane ‘Africa IP Forum—Reflections’. Ncube ‘Software Patents’ in Sylvia Papadous and Sizwe Snail (eds).pdf (accessed 19 May 2014).824 ARTICLE 13 For commentary on this phenomenon. 2016 office with which it is collaborating. Such a system does not even pretend to carry out meaningful substantive examination of patent applications. 9. ‘“Trust me”— Patent Offices in Developing Countries’ (2008) American Journal of Law and Medicine 151.oxfordjournals. Beth Simone Noveck. No. s 68. ‘Software and Business Methods Patents’ (2008) 2 JILT 1. and Patent Reform’ (2006– 7) Harvard Journal of Law & Technology 123. Secondly. collaboration may result in South Africa being afflicted by the capacity and other problems that its partner patent office has. Ibid. Australia’s innovation patents provide protection for only eight years. ‘Business Methods. Russia. Zimbabwe (10 –12 July 2007). 38. 124. these exclude substantive examination. ‘Peer to Patent: Collective Intelligence. Uma Suthersanen and Peter Dutfield ‘Utility Models and Other Alternatives to Patents’ in Uma Suthersanen. Patents Act 1990 (Cth). India and China which are currently in the BRICS economic bloc with South Africa. The obvious starting point would be to look to Brazil.wipo. Andries van der Merwe. there are divergent approaches to patenting computer programs. if South Africa introduces substantive examination.13 This is an important consideration because global approaches to patenting differ with regard to some controversial products or processes.14 However. In addition. Second-tier patent protection systems can also be structured in a way that ensures that they are relatively cheaper.17 Another way to improve the current situation would be the creation of a second-tier patent system suggested as in the draft national IP Policy. This obviously creates an imbalance as the utilitarian justification for patents is that they are granted as rewards to inventors who have created useful inventions. Chris de Villers and Tumelo Tshaya. granting procedure used and substantive criteria for protection. easier and faster to obtain than standard patent protection.20 A second-tier patent system is premised on an admission of the inadequacy of substantive examination because of lack of capacity and limited prior art search.html (accessed 19 May 2014). There are various forms of second-tier patent protection worldwide. it will be necessary to supplement the work of the patent office through encouraging third-party participation (as discussed below). Open Review. This clearly creates an imbalance as society is paying by granting these rights but it is not gaining anything guaranteed to be useful in return.

which is a model from which South Africa can draw lessons. s 101M. Kenya has adopted utility patents in addition to standard patents. 24 Andrew Christie and Sarah Moritz ‘Australia’ in Suthersanen.26 Section 7(2) of the Patents Act defines inventive step as follows: [A]n invention is to be taken to involve an inventive step when compared with the prior art base unless the invention would have been obvious to a person skilled in the relevant art in the light of the common general knowledge as it existed whether in or outside the patent area before the priority date of the relevant claim.29 This is considerably shorter than the several years which may elapse before a standard patent is granted. s 40 (2)(c).org/ by Nicoleta Rodica Dominte on May 16. Dutfield and Chow.oxfordjournals.32 In these two ways. 825 Section 7(4) of the Patents Act defines an innovative step as follows: [A]n invention is to be taken to involve an innovative step when compared with the prior art base unless the invention would. in the light of the common general knowledge as it existed whether in or outside the patent area before the priority date of the relevant claim.30 Australia’s second-tier patent system tries to reduce the legal uncertainty and excessive litigation caused by the issuance of untested patents by requiring substantive examination and certification before the enforcement of an innovative patent. because substantive examination is excluded. The essence of the test for establishing innovative step is to establish whether there is a difference between the claimed invention and the prior art and. para 52. The application process is easier than that for standard patents because the innovation patent system requires fewer formalities. if so. it has been said that it ‘lies somewhere between novelty and inventiveness’. the Kenyan Industrial Property Institute reported that it would cease substantive examination of utility patents and operate a repository system in respect of such patents.31 An innovation patent can also be opposed after substantive examination and certification.28 Application and enforcement Australia’s innovative patents are usually granted within a month of application. s 18(1A).24 This innovation patent system is currently under review.acip. Downloaded from http://jiplp.23 Australia’s innovation patent system Patentability criteria Standard patents are only granted for inventions that demonstrate inventive step (s 18(1) Patents Act 1990 (Cth)) while an innovation patent is granted for inventions that have an innovative step. Available at http://afro-ip. it will highlight the benefits of second-tier systems with a view to drawing lessons for South Africa. which are often lengthy and convoluted under the standard patent system. the Australian second-tier patent system incorporates substantive examination. 26 Patents Act 1990 (Cth).Caroline B. s 120(1A). In May 2014. n 19.au/get-the-right-ip/patents/types-of-patents/ innovation-patent/ (accessed 25 May 2014). For example.ipaustralia. to replace the petty patent system which had been introduced in 1979. ARTICLE . For example. the patent claims. only vary from the kinds of information set out in subsection (5) in ways that make no substantial contribution to the working of the invention. Ncube . 119. 32 Ibid. Intellectual Property Law and Innovation (Cambridge: Cambridge University Press 2007) 91. 31 Ibid. 30 Patents Act 1990 (Cth).blogspot.27 While the exact meaning of the innovative step requirement remains elusive. The draft national Intellectual Property Policy proposals Australian system. The first stage entailed the amendment of the Patents Act 1990 (Cth).gov.au/ reviews/all-reviews/review-innovation-patent-system/ (accessed 25 May 2014). are limited to five. to determine if such a difference makes a substantial contribution to the manner in which the invention works. 23 Isaac Rutenberg ‘No More Examination of Utility Patents for Kenya’ Afro IP Blog (23 May 2014). 29 IP Australia ‘The Innovation Patent’ (last update 3 April 2014).25 This review is the second stage of Australia’s overhaul of its patent system. to a person skilled in the relevant art. The difference between the inventive step test and the innovative step test is that the latter lacks an enquiry as to whether the invention would have been obvious to a person skilled in the art. The aim of the second stage of the review was to improve and not to abolish the innovation patent system. Available at http://www. confirmed Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81. whether that knowledge is considered separately or together with the information mentioned in subsection (3). Rather.html (accessed 23 May 2014). 25 Australian Government Advisory Council on Intellectual Property ‘Review of the Innovation Patent System’. above. In view of the on-going review which may result in substantial changes to the system. 2016 The Australian innovation patent system was introduced in 2001.com/2014/05/ no-more-examination-of-utility-models. this section will not dwell on the detail of the current system.gov. 28 William van Caenegem. Available at http://www. which provides for Australia’s standard and innovation patent systems through the Intellectual Property Laws Amendment (Raising the Bar) Act 35 of 2012 which came into effect on 15 April 2013. This is beneficial because it offers two levels of protection. The first 27 Delnorth Pty Ltd v Dura-Post (Aust) Pty Ltd [2008] FCA 1225. It is worth noting that some African states have already introduced second-tier patent protection.

9. A further handicap is that patent examiners have limited access to prior art resources and rely primarily on three nonexhaustive USPTO databases. to determine whether the claimed invention meets the inventive step and utility (industrial application) criteria in such a short time.40 Internet searches are restricted due to security concerns. inventions. and (e) stated government policy on innovation. n 24. 2016 Preventing abuse of the innovation patent system Care needs to be taken with second-tier patent systems to avoid its abuse by those who seek to protect cumulative improvement on inventions merely for strategic rent-seeking reasons. 34 Peter Treloar ‘Australia: Innovation Patents Set to Wreak Havoc’ Managing Intellectual Property (1 October 2008).org/ by Nicoleta Rodica Dominte on May 16. he can then apply for substantive examination and certification before instigating litigation. then search for any relevant prior art and. some aspects of inventions that qualify for standard patent protection are also protected by innovative patents as a secondary layer of protection.33 Assessment of the Australian system and its possible adoption by South Africa Empirical evidence from Australia indicates that the innovation patent system has been well received by local small businesses and is in fact more used by individuals rather than companies.36 These trends have continued. Enhancing third-party intervention If South Africa introduces substantive examination for all fields of technology or only for selected fields. in the USPTO. Christie and Moritz state that. if the patent is infringed and the patent holder wishes to enforce its patent rights. 135. 42 Joseph Farrell and Robert P. as confirmed by IP Australia. 35 Christie and Moritz. However. For example. Available at http:// www. Journal of Intellectual Property Law & Practice. s 120(1A). by 2003.39 An examiner attempts to understand the patent claims. which allows the patent holder to work the invention with some monopoly rights for short to medium duration. No.37 The system has been largely successful as a means of providing patent protection for SMEs and sub-patentable 33 Ibid. South Africa would do well to consider seriously the merits of a similar system. It is misuse of the system by large enterprises to obtain patent protection quickly so as to be able to litigate against infringing competitors relatively earlier than they would have been able to under the standard patent system. n 19. Allowing third parties to place relevant information before patent examiners will 39 Christopher J Worrel. 40 Noveck. 128. above. It appears that.34 This is not the intended purpose of the system. 68 per cent of innovative patent applications were filed by individuals35 and that the system is more used by Australians rather than foreigners. Merges ‘Incentives to Challenge and Defend Patents: Why Litigation Won’t Reliably Fix Patent Office Errors and Why Administrative Patent Review Might Help’ (2004) Berkeley Technology Law Journal 943. (d) a consideration of the nature of the types of inventions to be protected under the new system and the extent of copying in the relevant industries. patent examiners take ‘between 8 and 25 hours’ to examine a patent application. ‘Improving the Patent System: Community Sourcing and Pre-grant Opposition’ (2011) 42 University of Toledo Law Review 833.42 It is likely that South African patent examiners may face similar time and resource constraints. 2014.oxfordjournals. 37 IP Australia Innovation Patents. (c) an evaluation of the balance between foreign and local innovation with a view to establishing whether there is a need to promote local innovation through a second-tier patent system. 41 Ibid.managingip. above. 836. 135. 131 –34. 38 Uma Suthersanen and Graham Dutfield ‘Policy Considerations for Governments’ in Suthersanen.826 ARTICLE level of protection is an unenforceable patent granted without examination. (b) an assessment of whether the government has the human and financial resources to establish and effectively administer the new system. A person seeking to protect an invention through a combination of standard and second-tier patents has to ensure that the patent claims are drafted carefully to avoid duplicate protection. such abuse is checked by the fact that both a standard and innovative patent cannot be held over the same aspects of the same invention. Vol. This would negatively impact innovation as it would create patent thickets and raise the cost of the system through licensing costs. above. 64. if it is novel.com/Article/2021013/Innovation-patents-set-to-wreakhavoc. 945. Factors to be considered in investigating whether the introduction of a second-tier system would be beneficial to South Africa include:38 (a) empirical profiles of levels of innovation in South Africa. which is clearly inadequate. in Australia. Downloaded from http://jiplp. 10 .html (accessed 25 May 2014). there will be a need to counter the problems created by the limited resources and time constraints that patent examiners have.41 Similar challenges have been documented at the EPO. Dutfield and Chow (eds). it has been established that. Raising the Step Consultation Paper (2012) 3– 4. n 16. 36 Ibid. Secondly.

s 23(1)(l).53 3. s 23.59 9. s 61(1)(b). amending 35 USC). 469. or.47 The USPTO administers both ex-parte and inter-partes post-grant re-examination proceedings.50 Such opposition had to be lodged in writing. the United States and Australia: A Comparative Analysis’ (2009) 12(5) Journal of World Intellectual Property 467. s 23(1)(i). s 23(1)(b). 1952 Patents Act.61 50 51 52 53 54 55 56 57 58 59 60 61 1952 Patents Act. ‘that the invention does not relate to an art (whether producing a physical effect or not). s 23(1)(f). 1978 Patents Act. 2016 Third-party involvement is an important aspect of the patent system as it serves several purposes. 1952 Patents Act. ‘that the complete specification does not fully describe and ascertain the invention and the manner in which it is to be performed’. The following sections outline how this may be done. re-examination and revocation 43 Fiona Rotstein and Chris Dent. ‘that the application contains a material misrepresentation’.58 8. 46 Dent. A detailed description of each of these systems is unnecessary for present purposes. Opposition. s 23 (1)(e). These grounds include the following: 1. s 61(1)(a). These third-party proceedings are typically used by competitors. ‘that the complete specification does not disclose the best method of performing the invention known to the applicant at the time when the specification was lodged at the patent office’. n 43. 45 Rotstein and Dent. above. ‘that the invention is not useful’. s 61(1)(c). 1978 Patents Act. 1978 Patents Act. but recently civil society and other interest groups have begun to use them. s 61(1)(e)(i). 125 Stat 284. [providing] an alternative to litigation and providing competitors with ‘freedom to operate’ in the market’.51 The prescribed list of grounds for opposition was exhaustive and section 23 expressly provided that opposition was to be based on the listed grounds ‘and no others’. 1952 Patents Act. ‘that the specification includes claims which should in terms of sub-section (1) of section thirteen have been rejected’. s 61(1)(g). n 44. 1952 Patents Act. Downloaded from http://jiplp. at any time before the sealing of the patent’. with the consent of the applicant. Melbourne Legal Studies Research Paper No 593 (2012) 13. which is capable of being applied in trade or industry’. s 61(1)(f). 1952 Patents Act. These include ‘improving the quality of granted patents. Patents Act 37 of 1952.52 2.55 5. s 61(1)(c). 1978 Patents Act. Most of the grounds for opposition provided for in the 1952 Patents Act have been carried through into s 61 of the current Patents Act as grounds for revocation. 827 such further period as the registrar may on application made to him within the said period of three months allow. Purposes and Questions of Reform of the Opposition Decision in the Patent System’. The draft national Intellectual Property Policy proposals substantially reduce the time and resource constraints that examiners face. s 23(1)(c). 1978 Patents Act. ‘that the claims of the complete specification do not sufficiently and clearly define the subject-matter for which protection is claimed’.48 South Africa currently does not have pre-grant or postgrant opposition proceedings. 1978 Patents Act.Caroline B. s 23(1)(m).org/ by Nicoleta Rodica Dominte on May 16. 8 –9.44 The main ways of enabling third-party involvement globally are ‘post-grant opposition. 1952 Patents Act. pre-grant opposition and re-examination’. ‘that the applicant is not a person entitled under section eight to make the application’.oxfordjournals. although pre-grant opposition was provided for in repealed patent legislation.54 4. 1952 Patents Act. 47 Ibid.43 The overall effect of such involvement is the ‘enhancement of accountability within the patent system and the improvement of the perception of the integrity of the system’.60 10. s 23(1). s 61(1)(h). 468. s 23(1)(h). 48 Kimberley Weatherall ‘It’s Not Just Competitors: Acknowledging and Accommodating “Interfering Busybodies” and their Challenges to and their Challenges to Patent Validity’ (2009) 12(5) Journal of World Intellectual Property 500. 1952 Patents Act. 1978 Patents Act.56 6. 1945 AD 561. 44 Chris Dent ‘Opposing What? Nature. Ncube . ‘that the application is in fraud of the rights of the person giving such notice or of any person under or through whom he claims’. Ibid. s 23(1)(a). process. Ibid.45 Australia currently has an interpartes pre-grant opposition system administered by the patents office under s 59 of the Patents Act 1990. ‘that the invention was not new at the effective date of the application’.46 In Europe the EPO’s Opposition Division administers a post-grant opposition procedure. s 23(1). They are listed here merely to support the point that most jurisdictions provide means through which interested parties may intervene in the patent grant process.57 7. ‘Third Party Challenges in Europe. including a duly authorized representative of a government department’. 1978 Patents Act. Miller v Boxes & Shooks (Pty) Ltd. above. which were recently amended by the Leahy-Smith America Invents Act 2011 (Public Law 112-29. machine manufacture or composition of matter. 1978 Patents Act. s 61(1)(e)(ii).49 An opposition could be lodged by ‘any person. 49 Patents Act 9 of 1916. 1952 Patents Act. s 61(1)(c). ‘within three months from the date of the advertisement of the acceptance of a complete specification or within ARTICLE . 1978 Patents Act. s 23(1)(g). 467.

Andries van der Merwe ‘Revocation of Patents’ in Andries van der Merwe (ed) Law of Intellectual Property in South Africa (LexisNexis 2011) 319. above. handpicked review panel and facilitating an open selfselecting panel. 1978 and the correction of clerical errors or translation errors in patent applications in terms of section 50(3)–(6) in accordance with the procedure provided for in the Patent Regulations. insufficient disclosure and the fact that the patent holder was not entitled to apply for the patent. For example.66 The only type of third-party intervention currently available in South Africa is an application for revocation of a patent under s 61(1) of the 1978 Patents Act.62 Thereafter.65 As stated above. s 23(5).64 The matter would then be determined at a hearing held by the Commissioner. 62 63 64 65 66 67 68 Alistair Otter.69 In addition. the involvement of patent office personnel in . However.72 Third parties would therefore be supplementing the efforts of patent examiners.co. No. Expert or peer review Another valuable form of third-party intervention is expert or peer review. 9. Ibid. s 23(3). These two options are outlined below. The concern that arises with the use of such a model is that it is a closed system that can be manipulated.73 The draft policy does not elaborate on how experts can render assistance. 1952 Patents Act. Patent Regulations GNR 2470 of 15 December 1978. 836. Ibid. and had to be accompanied by a statement of the relevant supporting facts together with proof of service of the same on the patent applicant. the choice of courts as the forum frustrates the use of the system. In contrast. Vol. these grounds were grounds for opposition under the 1952 Patents Act. Stanford Institute for Economic Policy Research Discussion Paper No 01-29 (2002) 4. the patent applicant could lodge a counterstatement to contest the opposition63 which had to be served on the objector. patent office-administered opposition procedures are less expensive and quicker than litigation. while the grounds for revocation are comprehensive and ought to offer an impressive arsenal for interested parties to challenge patents. this was not done because of the prohibitive costs of litigation. This would enhance South Africa’s depository patent system by outsourcing examination to interested third parties as it were. Ibid. above n 16.70 but it is likely that had an administrative opposition procedure been available it would have been resorted to more often than the court. namely substantial cost. 135. which may be lacking on the bench. For an overview of this section. s 23(8). for example Glaxo v Cipla-Medpro (Pty) Ltd. This is because the patent office or other government agency may select a particular type of expert who meets certain subjective criteria such as Downloaded from http://jiplp. see Peter A Ramsden A Guide to Intellectual Property Law (Juta Cape Town 2011) 321– 26.oxfordjournals. 73 SA Draft IP Policy (2013) 32. Noveck. Closed review panel A panel of experts may be created to advise patent examiners on applications. There have been a few applications for revocation in South Africa. There are two ways of using peer review namely. Available at http://tectonic. Such a process enables experts or interested third parties to participate in the patent grant process by giving them an opportunity to provide relevant information to patent offices.828 ARTICLE Journal of Intellectual Property Law & Practice. Case No 92/9617 (19 June 2003). an interested person may use it to make an application for revocation of a patent. It would also be important even where substantive examination is undertaken because it has been proven that such examinations are often inadequate. 69 Jonathan Levin and Richard Levin. n 39.68 The revocation application is made to the court of the Commissioner of Patents and is blighted by the usual disadvantages of litigation. 2016 The notice of opposition filed by the objector was required to indicate the grounds on which the objection was based.za/?p=1135 (accessed 14 May 2014). 71 Farrell and Merges. 72 Worrel. this opposition procedure was not carried through to the 1978 Act. even in well-resourced patent offices such as the EPO71 and USPTO. ‘Patent Oppositions’. ‘SA Patent Opposition Could be Costly’ Tectonic Blog (29 August 2006). 10 the resolution of the opposition proceedings ensures the availability of technical expertise. Freedom to Innovate South Africa (FTISA) intended to use this section to challenge the XML software patent (Patent number ZA2003033346 granted in 2004) held by Microsoft. complexity and delay. 945. Alternatively. A person who is sued for patent infringement may use this section as the basis of a counterclaim for revocation of the relevant patent. 70 Glaxo v Cipla-Medpro (Pty) Ltd. as amended. As noted above. It is thus worth considering the re-introduction of non-court based opposition procedures either pre or post patent grant. s 23(4). Therefore. This would approximate the system of peer review of journal papers and research funding applications. The draft national IP policy seems to hint at this when it states that ‘other government departments or universities with capacity to evaluate patents substantively can assist in this regard’. using a closed.org/ by Nicoleta Rodica Dominte on May 16. 2014. above n 42. This article suggests that experts can assist through participation in a peer or expert review process. Opposition is now only available for applications for the restoration of lapsed patents under section 47 of the Patents Act.67 This section provides that any person may at any time apply for the revocation of a patent on a number of grounds including sub-patentability.

iip. The opposite effect can also be achieved through the selection process. Finally. These challenges may be overcome by outsourcing substantive examination to other patent offices. The other proposal for reform considered above is the introduction of substantive examination of patent applications in all or selected fields of technology. Available at www. in a way that escapes public scrutiny.qut. 80 Brian F. there has been experimentation with a more open. 849.pdf (accessed 23 May 2014). Peer-toPatent project pilot schemes have been run by the UKIPO (www. 847. it is hoped that some of this article’s suggestions will be considered and perhaps incorporated into the policy. While the future of the current policy proposals remains uncertain. n 39. self-selecting review model. A utility patent system would cater for sub-patentable inventions and to enable the continuance of a depository patent application system for some types of inventions. 829 by settling cases on favourable licensing terms and thus preserve their patents. n 39. Australia (www. Ncube . The UKIPO reports that its scheme ran successfully and that it has since launched an online file inspection service known as Ipsum. Looking to the future The consequence of South Africa’s depository patent system is that weak or invalid patents are being granted and will remain on the register of patents unless they revoked by the courts either as a result of a counterclaim in an infringement suit or as a direct application for revocation. which will be more accessible. 128. South Africa will encounter significant capacity problems if the decision to introduce substantive examinations is made. above. 75 Peer to Patent Project ‘Peer to Patent Graduates!’.peertopatent. about closed review panels.org/ by Nicoleta Rodica Dominte on May 16.74 This collaborative project of the USPTO and New York Law School ran two pilot schemes in 2007– 2009 and 2010–2011 to demonstrate the value of open public participation in patent examination. Annual evaluations of the project show that it was very beneficial.81 A similar initiative in South Africa will probably have a positive impact on the quality of substantive patent examination. as suggested in the draft national IP policy. This may be avoided by the prudent selection of partner patent offices. Once constituted. 79 UKIPO Peer-to-Patent Pilot Report (2011) 25.com (accessed 23 May 2014). the US Patents Act 35 USC was recently amended to provide for the implementation of a similar system. In the US this model named the Peer-to-Patent: Community Peer Review was first introduced in 2007. expressed above. This means that it is largely up to civil society or industry competitors to initiate litigation to invalidate sub-patentable patents. this article has canvassed the introduction of an administrative opposition system. 77 Ibid. 2016 Open self-selecting review panels Due the concerns. cheaper and quicker than the current court revocation process.78 Due to its success in the USA.org.gov.ipo. 81 Worrel. While civil society and industry may be more motivated to seek the revocation of invalid patents. Available at www. 78 Leahy –Smith America Invents Act 125 Stat 284.or. may assist with substantive examinations.peertopatent. above. Fitzgerald. 848. It is thus possible to create a patent-friendly panel that would mostly support the grant of patents in a biased manner. the prohibitive cost of such action will hinder them from doing so.uk/peertopatent). officials in government departments and university staff or students. Public Law 112-29.peertopatent. which will approximate the Peerto-Patent system. The draft national Intellectual Property Policy proposals educational qualifications.au) and Japan (www.au/39350 (accessed 23 May 2014). Therefore. However. Downloaded from http://jiplp.jp/e/ e_p2pj). s 8 amended s 122 of the Patents Act to provide for pre-issuance submissions by third parties. this would expose South Africa’s patent office to the capacity problems of its collaborators and may lead to undue influence on the country’s patent position.ipo. Benjamin McEniery and Jimmy Ti ‘Peer-to-Patent Australia: First Anniversary Report’ (December 2010).77 Consequently.76 It allowed any interested person to join the online community and to submit relevant prior art information to the USPTO.Caroline B. above.eprints.79 Similarly positive results have been reported in Australia80 and Japan. It is unlikely that members of public would initiate such actions. In other many instances.gov. 76 Worrel. substantive examination by South Africa’s patent office may be supplemented by enhancing third-party participation through a pregrant opposition procedure and the creation of an open online peer review system similar to the United States’ Peer-to-Patent project as the UK and Australia have done. the alleged infringer may lack resources to defend an infringement suit and thus have no option but to settle. Available at www. n 16. The introduction of a second-tier patent system has also been discussed. Alternatively. Patent applicants voluntarily enrolled their patents for review by the online community in return for expedited patent examination.tumblr. These proposals all seem viable and it is commendable that the draft national IP policy has identified them. the expert panel conducts its work behind the scenes. Patent holders can evade such counterclaims 74 Noveck.oxfordjournals.uk/p2p-report.75 It was based on open source software and run online from www. ARTICLE .org.