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South Africa Prepares for a Thorough Examination

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8 March 2017

It is no longer a secret that the South African Patent Office is in the process of implementing substantive search and examination (SSE). The new IP Consultative Framework which was approved by Cabinet on 6 July 2016, earmarked the implementation of SSE as an item for immediate domestic review. This is a strong indicator that it is “all-systems-go” for SSE in South Africa.

The Consultative Framework, in line with its predecessor the Draft National Policy on Intellectual Property, reiterated that one of the key drivers to implementing SSE is the realization of the rights of the masses to adequate healthcare services and medicine. More specifically, it stated that as far as SSE is concerned, “Several models are being considered, including the introduction of online patent searches and substantive examination that combines partial recognition of searches and examination reports conducted in foreign offices, with full substantive examination in certain fields pursuant to the country’s development and public interest considerations.”

While there are some indicators as to what these “certain fields” would be, a closer look at the examiners who have been appointed by the CIPC to date gives some key insights:

  • No less than 20 trainee patent examiners have been appointed;
  • Of the 20 trainee examiners, 11 have PhDs, 6 have Master’s degrees and 2 have Bachelor Honours degrees;
  • While qualifications are spread out over a number of technical fields, the overwhelming majority are in the life sciences with a strong focus on chemistry, biochemistry and medicinal chemistry;
  • Secondary fields of qualification include electrical and electronic engineering and pure physics;
  • Assuming for the moment that each examiner can examine 2 to 3 new applications every work week of the year, this would imply that 20 examiners could examine roughly 2000 to 3000 new applications in a year. In 2016, about 3000 new complete applications were filed in the pharmaceutical, chemical, biochemical and petrochemical fields alone. If these fields are chosen it is probably fair to assume that the examiners will initially not have capacity to examine others;
  • The trainee examiners are undergoing a two year extensive training programme before they can formally start examining new applications. This realistically pushes out the start of SSE to at least the end of 2018;
  • The trainee examiners have received first-hand training from the Japanese Patent Office, the WIPO and, most notably, the European Patent Office (EPO);
  • The EPO have also been contracted to conduct the bulk of the training over the next two years. SSE in line with EPO practice can therefore be expected, probably rightly so seeing as our patent laws are largely the same.

It therefore seems clear that patent applications in the pharmaceutical and other chemistry-based fields will be the first to be examined. This is in line with both the Draft Policy and the Consultative Framework.

Under the very capable and qualified guidance of Mr Trod Lehong, the newly appointed Registrar of Patents (who also happens to be a qualified South African patent attorney) the SSE team at the South African Patent Office is set to hit the ground running. The SSE team at Von Seidels is likewise gearing up for this momentous change in our patent system and will keep you informed as things unfold.

If you would like further information, please contact us.

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