As South Africa is a non-examining country, it is especially important for patentees to ensure that their patent claims are valid. For this reason, among others which will be discussed below, it is recommended that claims are amended to be in line with those of an examined counterpart. Amending the application to conform to South African patent law and practice is equally important and typically includes removing or revising the wording that may be prejudicial to the validity of the patent, adding omnibus claims and ensuring that claims adhere to permissible formats.

Pre-Grant vs Post-Grant Amendments

Post-grant amendments, while allowable, must adhere to a number of requirements outlined in the South African Patents Act 57 of 1978. These amendments must fall entirely within the scope of the claims prior to the amendment, be published in the Patent Journal, and are open to a stringent two-month, third-party opposition period. On the other hand, amendments filed before grant have the benefit of being wider in scope and can include matter disclosed in the description before the amendment.

Considerations for Expedited Grant

While fast-tracking the application may seem appealing, it may work against the applicant in the long run. Rushing through the application, acceptance and grant processes increases the risk of overlooking claim issues, which may result in potential enforcement challenges and costly amendment litigation down the line.

Delaying Amendments

If a patent proceeds to grant and there is a deliberate, intentional delay in amending claims that are invalid and the patentee knew and deliberately maintained the invalid claims in an unamended form, in other words, if the requirements of a culpable delay are met, a third party may successfully oppose the amendment, rendering the unamended patent invalid.

Amendments During Litigation

In the case of infringement, relief may be sought based on claims that are valid, even though other claims may be invalid. However, the invalid claims must first be amended before infringement proceedings continue. These amendments will be subject to conditions deemed fit and imposed by the Commissioner of Patents. The amendments must then be published for opposition – all of which incurs costs and delays infringement proceedings.

Further, the court can refuse to allow amendment of the claims or, if amendment is allowed, refuse to award damages for any acts of infringement committed before the amendment was made and may take into account the patentee’s conduct in permitting the claims to remain invalid on the Register.

Omnibus Claims

Although omnibus claims are frequently ignored or simply overlooked, they can be invaluable tools should litigation arise. Omnibus claims can be classed as narrow or broad. Narrow omnibus claims, for example “A compound as claimed in claim 1, substantially as herein described and illustrated” are limited in scope and refer to matter disclosed in the description, examples and/or figures as the subject matter of the claim. On the other hand, broad omnibus claims cover variations and embodiments unclaimed at the time of drafting and their inclusion could allow circumvention of the post-grant amendment requirements mentioned above. For instance, a broad omnibus claim such as “A new compound substantially as herein described” allows the scope of the post-grant amendment to extend to any matter disclosed in the specification, rather than only the scope of the granted claims, and thus for the post-grant amendment of the claims to be within the scope of the broadest claim prior to the amendment.

Although South African courts have not decided on the matter of broad omnibus claims, there have been successes with narrow omnibus claims, such as in the case of Frank & Hirsch (Proprietary) Limited v. Rodi & Wienenberger Aktiengesellschaft where a narrow omnibus claim was found to be valid and infringed. As both broad and narrow omnibus claims are allowed and still in use in South Africa, their addition in all patent applications should be seriously considered.

Taking the time to carefully review and amend South African patent applications may seem tedious or redundant as South Africa is a non-examining country. However, proactively amending applications to conform to South African patent law and practice and aligning the claims with those of an examined counterpart may reduce the need for amendments should litigation arise and may even increase protection. It is a simple, smart strategy that has the potential to save applicants a headache in the future – rather be safe than sorry!

By: Janusz Luterek and Stellar Frisby

For more information, please contact Janusz Luterek at our South Africa office.