Published Date: January 31, 2023

Recently, the Registrar of the South African Patent Office published a practice note updating the formality requirements for assignments in patent applications. Previously, where an International PCT application claims priority from an earlier filed application in a Convention country,  assignments were not required for filing in the South African PCT national phase application if the applicant in the international PCT application was identical to the applicant in the priority application. As of 25 January 2023, this exemption no longer applies, and assignments will now need to be filed in these instances.

The Registrar has retained the exemptions of:

(1)           not having to file assignments where suitable PCT 4.17 (ii) and (iii) declarations have been filed in the international PCT application, and

(2)           a PCT IB306 published in the international PCT application can still be used to show suitable chain of transfer.

Interestingly, the Registrar has added an exemption to all patent applications that assignments will not be required where a transfer of rights has occurred by operation of law, in which instance the name of the applicable legislation and section thereof will need to be included in a declaration contained in the Form P.3.

As a large proportion of applications filed at the South African Patent Office are PCT national phase applications we recommend that applicants file suitable PCT 4.17 (ii) and (iii) declarations wherever possible, if they are looking to decrease the documentary burden of South African patent filings.

Please contact us at patents@adams.africa to discuss ways in which we can assist in reducing the formality burden.