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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 Africas 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 Africas 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 Australias 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 Africas lead.

exclusively on South Africas 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

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This article considers the reforms to South Africas

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 Medecins 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 policys 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 Policys 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

Caroline B. Ncube . The draft national Intellectual Property Policy proposals

invention must have novelty, an inventive step and industrial application.

The depository system and its shortfalls

3
4

5
6

1978 Patents Act, s 43B.

Anthipi Pouris and Anastassios Pouris Patents and Economic
Development in South Africa: Managing Intellectual Property Rights
(2011) 1 South African Journal of Science 29.
Frank Joffe and Theo du Preez, Patent Delay Costs (2008) Jutas Business
Law 29.
Muhammed Vally, Is South Africa a Patently Attractive Jurisdiction?
(2011) 4(11) Enterprise Risk 24.

823

disadvantages, this article discusses three suggestions

for reform, namely the introduction of substantive examination, the introduction of a second-tier patent
system and the enhancement of third-party intervention
procedures, through opposition, revocation and expert or
peer review.

Substantive examination
The introduction of substantive examination may eliminate or reduce the problems caused by the depository
patent system. Substantive examinations, if properly
undertaken, will ensure that sub-patentable inventions
are not patented. However, introducing substantive examination will raise capacity problems because of the
lack of personnel with the requisite skill and experience
to do a proper job, as noted by the draft national IP
policy.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.
It has been suggested that these capacity problems may
be alleviated by collaboration between South Africas
patent office and patent offices or organizations that
currently undertake substantive patent examination.10
This suggestion has been taken up in the draft national IP
policy.11 Such collaboration would entail South Africa
outsourcing substantive examinations to another patent
office. This could be a temporary arrangement while
South Africa develops the necessary human and other
resources to carry out its own substantive examinations.
Alternatively, it could be used as a permanent solution.
The draft national IP policy notes that currently
South Africa is contracting out substantive examination
for patents registered under the PCT system.12 An openness to further future collaboration can be read into this
statement. There are other possible collaboration partners. For example, South Africa could collaborate with
the African Regional Intellectual Property Organization
(ARIPO), the European Patent Office (EPO), the US
Patents and Trademarks Office (USPTO) or the United
Kingdoms Intellectual Property Office (UKIPO). The
danger of such collaboration is that it may result in
South Africas 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, above, n 4, 5.

Ibid, 6.
SA Draft IP Policy (2013) 31.
Pouris and Pouris, above, n 4, 9.
SA Draft IP Policy (2013) 31.
Ibid, 32.

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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, with South
Africa designated as one of the states in which patent protection is sought.3 South African patents are issued after
a procedural examination for compliance with formalities. No substantive examination of patent applications
is undertaken.
South Africas depository patent system is disadvantageous and is considered a major weakness for four main
reasons. First, all procedurally proper patent applications
are granted, including those that constitute excluded
subject matter or do not meet patentability criteria (subpatentable inventions). In such instances, the patent
holders are granted a monopoly in sub-patentable inventions when they have not provided any benefit for society.
A related point is that, even where the patented invention
meets patentability criteria, 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.4
Secondly, the lack of substantive examination means
that errors in patent specifications go undetected, with
similar adverse effects.5 Many patent applicants file the
same application in several jurisdictions, 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. 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.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.7 Finally,
the system may hinder future research and development in some fields.8 To minimize or eliminate these

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13 For commentary on this phenomenon, see Peter Drahos, Trust me

Patent Offices in Developing Countries (2008) American Journal of Law
and Medicine 151.
14 Caroline B. Ncube Software Patents in Sylvia Papadous and Sizwe Snail
(eds), Cyberlaw III @ SA the Law of the Internet in South Africa (3rd edn
Van Schaik Pretoria 2012) 123; Chris de Villers and Tumelo Tshaya,
Software and Business Methods Patents (2008) 2 JILT 1; Andries van der
Merwe, Business Methods, Technology and Patentability (2006) Journal
of Contemporary Roman Dutch Law/Tydskrif Vir Hedendaagse RomeinHollandse Reg (THRHR) 122.
15 David Cochrane Africa IP ForumReflections, Afro IP Blog (28 February
2013). Available at http://afro-ip.blogspot.com/2013/02/africa-ip-forum2013-reflections-david.html (accessed 19 May 2014); Frederick Otswongo
and Cleopas Ojode Patent Examination System in Kenya, WIPO
Workshop on Utilizing External Examination Results, ARIPO, Zimbabwe
(10 12 July 2007). Available at http://www.wipo.int/edocs/mdocs/mdocs/

meaningful third-party intervention. These options are

discussed further below. 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.

Second-tier or utility patents

Second-tier patent protection systems are intended to
provide protection for sub-patentable inventions. Generally,
these exclude substantive examination.19 They differ from
standard patent protection with respect to the protected
subject matter, granting procedure used and substantive criteria for protection. Second-tier patent protection systems
can also be structured in a way that ensures that they are
relatively cheaper, 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. Such a
system does not even pretend to carry out meaningful
substantive examination of patent applications. It simply
issues patents for untested inventions. 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. Yet these systems do not test the
utility of inventions before giving out the reward of monopolistic exclusionary rights. 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.
Second-tier patent systems usually grant patent protection for a relatively short time ranging from eight to
15 years.21 For example, Australias innovation patents
provide protection for only eight years.22 It is appropriate to limit the duration of protection out of recognition of the lower quality of inventions in this way.
There are various forms of second-tier patent protection
worldwide. The following paragraphs briefly outline the

16

17

18
19

20
21
22

en/wipo_ip_hre_12/wipo_ip_hre_12_ref_tbc1kenya.pdf (accessed 19 May

2014).
Beth Simone Noveck, Peer to Patent: Collective Intelligence, Open Review,
and Patent Reform (2006 7) Harvard Journal of Law & Technology 123,
124.
Catherine Tomlinson, People Before Patents (2012) 4 NSP Review.
Available at http://www.nspreview.org/2012/11/20/people-before-patents/
(accessed 25 May 2014).
SA Draft IP Policy (2013) 32.
Uma Suthersanen and Peter Dutfield Utility Models and Other
Alternatives to Patents in Uma Suthersanen, Graham Dutfield and Kit
Boey Chow (eds) Innovation Without Patents: Harnessing the Creative Spirit
in a Diverse World (Edward Elgar Cheltenham 2007) 19.
Ibid, 38.
Ibid, 20.
Patents Act 1990 (Cth), s 68.

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office with which it is collaborating.13 This is an important consideration because global approaches to patenting differ with regard to some controversial products or
processes. For example, there are divergent approaches
to patenting computer programs.14 However, this danger
may be averted through the prudent choice of patent
office partners. All South Africa would have to do is select
a patent office with a substantially similar patenting approach. It would also be beneficial to partner with a jurisdiction with a similar socio-economic landscape and a
common policy perspective. The obvious starting point
would be to look to Brazil, Russia, India and China which
are currently in the BRICS economic bloc with South
Africa.
Secondly, collaboration may result in South Africa
being afflicted by the capacity and other problems that
its partner patent office has. For example, ARIPO has
severe patent examiner shortages and Kenya currently
only has eleven patent examiners in office.15 In view of
these potential problems, it may be prudent to seek a solution that does not require South Africas patent office to
rely on other patent offices. In addition, due to the challenges faced by examining patent offices, if South Africa
introduces substantive examination, it will be necessary
to supplement the work of the patent office through encouraging third-party participation (as discussed below).
It has been shown that patent examiners, in leading
economies such as the USA and Europe, are generally
underpaid and overworked.16 Therefore, if South Africa
introduces substantive examination, care would have to
be taken to ensure that patent examiners have reasonable
workloads. 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.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.18 In addition, it would be useful to enable more

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

Caroline B. Ncube . The draft national Intellectual Property Policy proposals

Australian system, which is a model from which South

Africa can draw lessons. It is worth noting that some
African states have already introduced second-tier patent
protection. For example, Kenya has adopted utility patents
in addition to standard patents. In May 2014, 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.23

Australias 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.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, whether that knowledge is
considered separately or together with the information
mentioned in subsection (3).
23 Isaac Rutenberg No More Examination of Utility Patents for Kenya Afro
IP Blog (23 May 2014). Available at http://afro-ip.blogspot.com/2014/05/
no-more-examination-of-utility-models.html (accessed 23 May 2014).
24 Andrew Christie and Sarah Moritz Australia in Suthersanen, Dutfield and
Chow, above, n 19, 119.
25 Australian Government Advisory Council on Intellectual Property Review
of the Innovation Patent System. Available at http://www.acip.gov.au/
reviews/all-reviews/review-innovation-patent-system/ (accessed 25 May
2014).
26 Patents Act 1990 (Cth), s 18(1A).

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, 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, 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.

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 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, if so, to determine if such a difference makes a
substantial contribution to the manner in which the invention works.27 While the exact meaning of the innovative step requirement remains elusive, it has been said
that it lies somewhere between novelty and inventiveness.28

Application and enforcement

Australias innovative patents are usually granted within a
month of application, because substantive examination is
excluded.29 This is considerably shorter than the several
years which may elapse before a standard patent is granted.
The application process is easier than that for standard
patents because the innovation patent system requires
fewer formalities. For example, the patent claims, which are
often lengthy and convoluted under the standard patent
system, are limited to five.30
Australias 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.31 An innovation patent can also be
opposed after substantive examination and certification.32
In these two ways, the Australian second-tier patent system incorporates substantive examination. 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, para 52,
confirmed Dura-Post (Aust) Pty Ltd v Delnorth Pty Ltd [2009] FCAFC 81.
28 William van Caenegem, Intellectual Property Law and Innovation
(Cambridge: Cambridge University Press 2007) 91.
29 IP Australia The Innovation Patent (last update 3 April 2014). Available at
http://www.ipaustralia.gov.au/get-the-right-ip/patents/types-of-patents/
innovation-patent/ (accessed 25 May 2014).
30 Patents Act 1990 (Cth), s 40 (2)(c).
31 Ibid, s 120(1A).
32 Ibid, s 101M.

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The Australian innovation patent system was introduced

in 2001, to replace the petty patent system which had
been introduced in 1979.24 This innovation patent
system is currently under review.25 This review is the
second stage of Australias overhaul of its patent system.
The first stage entailed the amendment of the Patents
Act 1990 (Cth), which provides for Australias 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. The aim
of the second stage of the review was to improve and not
to abolish the innovation patent system. In view of the
on-going review which may result in substantial changes
to the system, this section will not dwell on the detail of
the current system. Rather, it will highlight the benefits
of second-tier systems with a view to drawing lessons for
South Africa.

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ARTICLE

level of protection is an unenforceable patent granted

without examination, which allows the patent holder to
work the invention with some monopoly rights for short
to medium duration. Secondly, if the patent is infringed
and the patent holder wishes to enforce its patent rights,
he can then apply for substantive examination and certification before instigating litigation.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. Christie and Moritz state that, by
2003, 68 per cent of innovative patent applications were
filed by individuals35 and that the system is more used
by Australians rather than foreigners.36 These trends
have continued, as confirmed by IP Australia.37
The system has been largely successful as a means of
providing patent protection for SMEs and sub-patentable
33 Ibid, s 120(1A).
34 Peter Treloar Australia: Innovation Patents Set to Wreak Havoc Managing
Intellectual Property (1 October 2008). Available at http://
www.managingip.com/Article/2021013/Innovation-patents-set-to-wreakhavoc.html (accessed 25 May 2014).
35 Christie and Moritz, above, n 24, 128.
36 Ibid, 131 34.
37 IP Australia Innovation Patents, Raising the Step Consultation Paper
(2012) 3 4.
38 Uma Suthersanen and Graham Dutfield Policy Considerations for
Governments in Suthersanen, Dutfield and Chow (eds), above, n 19, 64.

inventions. South Africa would do well to consider seriously the merits of a similar system. 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;
(b) an assessment of whether the government has the
human and financial resources to establish and
effectively administer the new system;
(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;
(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; and
(e) stated government policy on innovation.

Enhancing third-party intervention

If South Africa introduces substantive examination for
all fields of technology or only for selected fields, there
will be a need to counter the problems created by the
limited resources and time constraints that patent examiners have. For example, it has been established that, in
the USPTO, patent examiners take between 8 and 25
hours to examine a patent application, which is clearly
inadequate.39 An examiner attempts to understand the
patent claims, then search for any relevant prior art
and, if it is novel, to determine whether the claimed invention meets the inventive step and utility (industrial
application) criteria in such a short time. A further
handicap is that patent examiners have limited access to
prior art resources and rely primarily on three nonexhaustive USPTO databases.40 Internet searches are
restricted due to security concerns.41 Similar challenges
have been documented at the EPO.42 It is likely that
South African patent examiners may face similar time
and resource constraints. Allowing third parties to
place relevant information before patent examiners will
39 Christopher J Worrel, Improving the Patent System: Community Sourcing
and Pre-grant Opposition (2011) 42 University of Toledo Law Review 833,
836.
40 Noveck, above, n 16, 135.
41 Ibid, 135.
42 Joseph Farrell and Robert P. Merges Incentives to Challenge and Defend
Patents: Why Litigation Wont Reliably Fix Patent Office Errors and Why
Administrative Patent Review Might Help (2004) Berkeley Technology Law
Journal 943, 945.

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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. This would negatively impact innovation as it would create patent thickets and raise the
cost of the system through licensing costs. It appears
that, in Australia, some aspects of inventions that qualify
for standard patent protection are also protected by innovative patents as a secondary layer of protection.34
This is not the intended purpose of the 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. However,
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. 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.

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

Caroline B. Ncube . The draft national Intellectual Property Policy proposals

substantially reduce the time and resource constraints

that examiners face. The following sections outline how
this may be done.

Opposition, re-examination and revocation

43 Fiona Rotstein and Chris Dent, Third Party Challenges in Europe, the
United States and Australia: A Comparative Analysis (2009) 12(5) Journal
of World Intellectual Property 467, 468.
44 Chris Dent Opposing What? Nature, Purposes and Questions of Reform of
the Opposition Decision in the Patent System, Melbourne Legal Studies
Research Paper No 593 (2012) 13.
45 Rotstein and Dent, above, n 43, 467.
46 Dent, above, n 44, 8 9.
47 Ibid, 469.
48 Kimberley Weatherall Its 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.
49 Patents Act 9 of 1916; Patents Act 37 of 1952, s 23; Miller v Boxes & Shooks
(Pty) Ltd, 1945 AD 561.

827

such further period as the registrar may on application

made to him within the said period of three months allow,
or, with the consent of the applicant, at any time before the
sealing of the patent.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. 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. These grounds include the following:
1. that the applicant is not a person entitled under
section eight to make the application;52
2. 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;53
3. that the invention does not relate to an art (whether
producing a physical effect or not), process, machine
manufacture or composition of matter, which is
capable of being applied in trade or industry;54
4. that the invention is not useful;55
5. that the complete specification does not fully describe and ascertain the invention and the manner in
which it is to be performed;56
6. that the claims of the complete specification do not
sufficiently and clearly define the subject-matter for
which protection is claimed;57
7. 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;58
8. that the application contains a material misrepresentation;59
9. that the invention was not new at the effective date
of the application;60
10. that the specification includes claims which should
in terms of sub-section (1) of section thirteen have
been rejected.61
50
51
52
53
54
55
56
57
58
59
60
61

1952 Patents Act, s 23(1).

Ibid, s 23(1).
Ibid, s 23(1)(a); 1978 Patents Act, s 61(1)(a).
1952 Patents Act, s 23(1)(b); 1978 Patents Act; s 61(1)(b).
1952 Patents Act, s 23(1)(c); 1978 Patents Act, s 61(1)(c).
1952 Patents Act, s 23 (1)(e); 1978 Patents Act, s 61(1)(c).
1952 Patents Act, s 23(1)(f); 1978 Patents Act, s 61(1)(e)(i).
1952 Patents Act, s 23(1)(g); 1978 Patents Act, s 61(1)(f).
1952 Patents Act, s 23(1)(h); 1978 Patents Act, s 61(1)(e)(ii).
1952 Patents Act, s 23(1)(i); 1978 Patents Act, s 61(1)(g).
1952 Patents Act, s 23(1)(l); 1978 Patents Act, s 61(1)(c).
1952 Patents Act, s 23(1)(m); 1978 Patents Act, s 61(1)(h).

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Third-party involvement is an important aspect of the

patent system as it serves several purposes. These include
improving the quality of granted patents, [providing]
an alternative to litigation and providing competitors
with freedom to operate in the market.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.44
The main ways of enabling third-party involvement
globally are post-grant opposition, pre-grant opposition
and re-examination.45 Australia currently has an interpartes pre-grant opposition system administered by the
patents office under s 59 of the Patents Act 1990.46 In
Europe the EPOs Opposition Division administers a
post-grant opposition procedure.47 The USPTO administers both ex-parte and inter-partes post-grant re-examination proceedings, which were recently amended by
the Leahy-Smith America Invents Act 2011 (Public Law
112-29, 125 Stat 284, amending 35 USC). A detailed description of each of these systems is unnecessary for
present purposes. 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. These third-party proceedings are typically used by competitors, but recently civil society and
other interest groups have begun to use them.48
South Africa currently does not have pre-grant or postgrant opposition proceedings, although pre-grant opposition was provided for in repealed patent legislation.49 An
opposition could be lodged by any person, including a
duly authorized representative of a government department.50 Such opposition had to be lodged in writing,
within three months from the date of the advertisement
of the acceptance of a complete specification or within

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

the resolution of the opposition proceedings ensures the

availability of technical expertise, which may be lacking on
the bench.
There have been a few applications for revocation in
South Africa, for example Glaxo v Cipla-Medpro (Pty)
Ltd,70 but it is likely that had an administrative opposition procedure been available it would have been
resorted to more often than the court. It is thus worth
considering the re-introduction of non-court based opposition procedures either pre or post patent grant. This
would enhance South Africas depository patent system
by outsourcing examination to interested third parties as
it were. It would also be important even where substantive examination is undertaken because it has been
proven that such examinations are often inadequate,
even in well-resourced patent offices such as the EPO71
and USPTO.72 Third parties would therefore be supplementing the efforts of patent examiners.

62
63
64
65
66
67

68 Alistair Otter, SA Patent Opposition Could be Costly Tectonic Blog (29

August 2006). Available at http://tectonic.co.za/?p=1135 (accessed 14 May
2014).
69 Jonathan Levin and Richard Levin, Patent Oppositions, Stanford Institute
for Economic Policy Research Discussion Paper No 01-29 (2002) 4.
70 Glaxo v Cipla-Medpro (Pty) Ltd, Case No 92/9617 (19 June 2003).
71 Farrell and Merges, above n 42, 945.
72 Worrel, above, n 39, 836; Noveck, above n 16, 135.
73 SA Draft IP Policy (2013) 32.

1952 Patents Act, s 23(3).

Ibid, s 23(4).
Ibid, s 23(5).
Ibid, s 23(8).
Patent Regulations GNR 2470 of 15 December 1978, as amended.
For an overview of this section, see Peter A Ramsden A Guide to Intellectual
Property Law (Juta Cape Town 2011) 321 26; Andries van der Merwe
Revocation of Patents in Andries van der Merwe (ed) Law of Intellectual
Property in South Africa (LexisNexis 2011) 319.

Expert or peer review

Another valuable form of third-party intervention is
expert or peer review. 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.73 The draft policy
does not elaborate on how experts can render assistance.
This article suggests that experts can assist through participation in a peer or expert review process. 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. There are
two ways of using peer review namely, using a closed,
handpicked review panel and facilitating an open selfselecting panel. These two options are outlined below.

Closed review panel

A panel of experts may be created to advise patent examiners on applications. This would approximate the
system of peer review of journal papers and research
funding applications. The concern that arises with the
use of such a model is that it is a closed system that can
be manipulated. This is because the patent office or
other government agency may select a particular type
of expert who meets certain subjective criteria such as

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The notice of opposition filed by the objector was

required to indicate the grounds on which the objection
was based, 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.62 Thereafter, the
patent applicant could lodge a counterstatement to contest
the opposition63 which had to be served on the objector.64
The matter would then be determined at a hearing held
by the Commissioner.65 As stated above, this opposition
procedure was not carried through to the 1978 Act.
Opposition is now only available for applications for
the restoration of lapsed patents under section 47 of the
Patents Act, 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.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.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, insufficient disclosure and
the fact that the patent holder was not entitled to apply
for the patent. As noted above, these grounds were
grounds for opposition under the 1952 Patents Act. A
person who is sued for patent infringement may use this
section as the basis of a counterclaim for revocation of
the relevant patent. Alternatively, an interested person
may use it to make an application for revocation of a
patent. For example, 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. However, this was
not done because of the prohibitive costs of litigation.68
The revocation application is made to the court of
the Commissioner of Patents and is blighted by the usual
disadvantages of litigation, namely substantial cost, complexity and delay. Therefore, while the grounds for revocation are comprehensive and ought to offer an impressive
arsenal for interested parties to challenge patents, the
choice of courts as the forum frustrates the use of the
system. In contrast, patent office-administered opposition
procedures are less expensive and quicker than litigation.69
In addition, the involvement of patent office personnel in

Caroline B. Ncube . The draft national Intellectual Property Policy proposals

educational qualifications. It is thus possible to create a

patent-friendly panel that would mostly support the
grant of patents in a biased manner. The opposite effect
can also be achieved through the selection process. Once
constituted, the expert panel conducts its work behind
the scenes, in a way that escapes public scrutiny.

Looking to the future

The consequence of South Africas 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. Patent holders can evade such counterclaims
74 Noveck, above, n 16, 128.
75 Peer to Patent Project Peer to Patent Graduates!. Available at
www.peertopatent.tumblr.com (accessed 23 May 2014).
76 Worrel, above, n 39, 847.
77 Ibid, 848.
78 Leahy Smith America Invents Act 125 Stat 284, Public Law 112-29, s 8
amended s 122 of the Patents Act to provide for pre-issuance submissions
by third parties.

829

by settling cases on favourable licensing terms and thus

preserve their patents. In other many instances, the
alleged infringer may lack resources to defend an infringement suit and thus have no option but to settle.
This means that it is largely up to civil society or industry competitors to initiate litigation to invalidate sub-patentable patents. It is unlikely that members of public
would initiate such actions. While civil society and industry may be more motivated to seek the revocation of
invalid patents, the prohibitive cost of such action will
hinder them from doing so. Therefore, this article has
canvassed the introduction of an administrative opposition system, which will be more accessible, cheaper and
quicker than the current court revocation process.
The other proposal for reform considered above is the
introduction of substantive examination of patent applications in all or selected fields of technology. The introduction of a second-tier patent system has also been discussed.
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.
South Africa will encounter significant capacity problems if the decision to introduce substantive examinations is made. These challenges may be overcome by
outsourcing substantive examination to other patent
offices. However, this would expose South Africas patent
office to the capacity problems of its collaborators and
may lead to undue influence on the countrys patent position. This may be avoided by the prudent selection of
partner patent offices. Alternatively, substantive examination by South Africas 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. Finally, as suggested in the draft national IP policy,
officials in government departments and university staff
or students, may assist with substantive examinations.
These proposals all seem viable and it is commendable
that the draft national IP policy has identified them.
While the future of the current policy proposals remains
uncertain, it is hoped that some of this articles suggestions will be considered and perhaps incorporated into
the policy.
79 UKIPO Peer-to-Patent Pilot Report (2011) 25. Available at
www.ipo.gov.uk/p2p-report.pdf (accessed 23 May 2014).
80 Brian F. Fitzgerald, Benjamin McEniery and Jimmy Ti Peer-to-Patent
Australia: First Anniversary Report (December 2010). Available at
www.eprints.qut.au/39350 (accessed 23 May 2014).
81 Worrel, above, n 39, 849.

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Open self-selecting review panels

Due the concerns, expressed above, about closed review
panels, there has been experimentation with a more open,
self-selecting review model. In the US this model named
the Peer-to-Patent: Community Peer Review was first introduced in 2007.74 This collaborative project of the USPTO
and New York Law School ran two pilot schemes in 2007
2009 and 20102011 to demonstrate the value of open
public participation in patent examination.75 It was based
on open source software and run online from
www.peertopatent.org. Patent applicants voluntarily enrolled their patents for review by the online community in
return for expedited patent examination.76 It allowed any
interested person to join the online community and to
submit relevant prior art information to the USPTO.
Annual evaluations of the project show that it was very
beneficial.77 Consequently, the US Patents Act 35 USC was
recently amended to provide for the implementation of a
similar system.78 Due to its success in the USA, Peer-toPatent project pilot schemes have been run by the UKIPO
(www.ipo.gov.uk/peertopatent),
Australia
(www.peertopatent.org.au) and Japan (www.iip.or.jp/e/
e_p2pj). The UKIPO reports that its scheme ran successfully and that it has since launched an online file inspection
service known as Ipsum, which will approximate the Peerto-Patent system.79 Similarly positive results have been
reported in Australia80 and Japan.81 A similar initiative in
South Africa will probably have a positive impact on the
quality of substantive patent examination.

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