How to patent an idea in South Africa: Part three

05 Jun 2023

In this series, we’re covering what to expect when you meet with a patent attorney for the first time. In Part 1 you would have wowed them with your new idea, and you were introduced in turn to the concept that Intellectual Property rights are a set of tools. In Part 2, we had a look at some of the requirements and timelines involved in patenting. If you missed this have a look at our previous article in this series. Now, we’re getting into the big questions: costs, other forms of IP, and taking those first steps in the real world.

Costs

The single most-asked question a patent attorney gets is probably “how expensive is a patent?”.

From our previous discussion, you’ll remember that patents need to be applied for in one jurisdiction (the so-called priority document) and can then be extended to other jurisdictions by other applications that need to take place within a particular time period. You don’t get a second chance to apply once the period to do so has expired. Once the stage has been set and the applications have been made, the patent applications will then usually go through various rounds of examination by local patent examiners (whose job is to make sure that only inventions that meet the standards of patentability we talked about in Part 2 will be granted a patent in their country or region).

The question of expenses then becomes a bit like asking how long a piece of string is. The only real answer your patent attorney can give you at an initial meeting is “it depends on where you want to file”. This then becomes a question of where you foresee the prime markets for your invention being, as the market itself is what you would protect. Once you have a good idea of where you want to file, and what sort of filing strategy you would use, then your attorneys can usually provide estimates for the initial filing costs. As a general rule: where you’re intending to protect an invention in South Africa, then the costs will be in the low tens of thousands of Rands overall. Where you want to protect an invention in a few key jurisdictions, the costs will be in the low hundreds of thousands of Rands. And where you want a worldwide ring in many jurisdictions the costs will be in the order of up to a few million Rands.

The other tools in the box

With all this information in hand, it’s time to return to the other IP-related tools available to you and work out where they fit into your commercial strategy. In Part 1, we discussed how different forms of IP have different applications and different requirements for gaining rights. So, if your invention includes a mass-produced part or component that is differentiated from others on the market by how it looks, then a registered design may be in order.

Registered designs can be applied for a short while after the product has entered the market: you have a six-month “grace period” in which to do so. In other respects it is similar to a limited, short-lived and cheaper version of a patent. A registered design is a good option for obtaining protection for a very specific embodiment of a device or component.

Copyright, on the other hand, will be generated automatically whenever you (or an employee of yours acting in the course and scope of their employment) draws, writes or codes something related to your product or invention. No specific registration is required (or possible) in South Africa for most copyrightable works, just good record-keeping to demonstrate when the copyrighted work originated. Copyright generated by contractors or third parties must be assigned in writing in order to be owned by another party and commercial, and so contractual agreements begin to enter the picture. Commercial attorneys are very important in advising on these issues, and also provide useful services in drafting contracts and licences, setting up corporate structures, and assisting in processes such as offshoring.

Trade marks can be acquired by bona fide use, and can also be registered as a separate process. There’s no immediate timeline for trade marks, but they should probably be investigated before finalising the logos, product names and getup of a product or service to make sure that they are available. A trade mark or other IP attorney can assist you in performing the necessary searches and applications.

The step-by-step approach to success

By now, you would have reached the last leg of that important initial meeting, and the time has come to take stock. The most important thing, for the immediate future, is to set up and organise contractual relations as you develop your idea into a marketable product or service.

If patents are relevant, then the best time to begin the patent application process is usually when you have a working prototype that you can describe or show to your patent attorneys. Again, you want to have at least considered a patent application before your idea hits the market or becomes public knowledge, in case disclosure robs you of the opportunity to do so.

You should also consider the issue of trade marks before finalising the look and feel of your brand. Once on the market, you then have a short window in which to consider designs, and then potentially a long road ahead in which to carry on the prosecution of one or more patent applications. You will be managing commercial and copyright concerns throughout the process, and should look for expert advice where issues of taxation, offshoring, valuation and licencing are concerned. Here the benefits of starting early will pay off, as you will already have put most of the pieces into place to carry on business and will know which experts to call for most contingencies.

Article sourced from KISCH IP.

See also:

• How to patent an idea in South Africa in three parts: Part two
• Patent law for beginners
• Intellectual property protection in South Africa
• SAIIPL Submission on the Copyright and Performers Protection Bills to the NCOP

(This article is provided for informational purposes only and not for the purpose of providing legal advice. For more information on the topic, please contact the author/s or the relevant provider.)