Despite government initiatives to promote and encourage research and development, South Africa is not developing the way it should in this area, says specialist intel-lectual property (IP) firm Spoor & Fisher patent attorney David Cochrane.
He states that South Africa is falling behind other countries with regard to producing innovations and filing patents to protect them. “It’s a pity that, despite all the effort that has been put into increasing research and development in South Africa, we have yet to see results,” he says.
Referring to statistics from the World Intellectual Property Organisation (WIPO), Cochrane identifies a gradual but steady decline in the number of international Patent Cooperation Treaty (PCT) applications being filed by South African companies.
WIPO reports that, in 2007, South Africa filed 406 international PCT patent applications, and has been filing fewer each year since then, with a total of 319 PCT patent applications filed last year.
Cochrane is concerned about the fact that South Africa is falling behind the rest of the world, particularly with regard to its fellow Brics nations – Brazil, Russia, India and China. Cochrane believes South Africa is not performing to its potential.
“For companies to derive maximum benefit from their inventions, an inter- national market needs to be targeted, in addition to having a local market. This is what our country should be striving for – selling goods internationally rather than being simply a raw-materials supplier, and developing into an economy that supplies technology,” says Cochrane, further stressing the importance of innovation and the need to protect it internationally.
Cochrane cannot confirm why South Africans are reluctant to patent their innovations internationally, but surmises that it has to do with South African com- panies not commercialising their tech- nologies internationally, the costs involved in filing patents internationally and the fact that many South African companies do not have sufficient knowledge about the procedures involved, or how they can benefit from it, he says.
The Patenting Process
Most companies across the world will file for a provisional patent application when they have a new invention. The provisional patent application gives the company 12 months to decide on the commercial viability and patentability of its invention, and must be filed before the invention is disclosed to anyone on a nonconfidential basis.
The day on which a company files its provisional application is the ‘priority date’, indicating the day on which the novelty of an invention is determined. This also prevents anyone else from trying to patent the same invention.
At the end of the 12-month period, if the company decides that the invention is patent-worthy and wants to file for inter- national patents, an application can then be filed for each individual country.
However, there is always a chance that the patent may not be granted in certain countries if, for instance, the invention is not regarded as being inventive enough. The process of filing patents internationally is also expensive.
“It can cost between R60 000 and R200 000 to get a patent granted in a foreign country,” says Cochrane. However, these costs can be delayed by filing a PCT application, he explains.
Filing for a PCT Application
At acost of R60 000 to R80 000, a PCT application grants a company 18 months, in addition to the initial 12 months of the provisional application, before it proceeds internationally.
Further, the PCT system provides an applicant with a report, researched and drafted by the International Searching Authority, on the patentability of the applicant’s invention. Based on this report, the company can make a decision on whether it will be worthwhile to proceed with filing patent applications internationally.
“The PCT system gives you more time to save before incurring all the costs of filing patents in different countries. It also allows you to make an informed decision on whether or not you should continue with the patent application internationally,” says Cochrane.
He adds that, ideally, a company should use the 18-month period to start commercialising its innovation to test its marketability in the foreign countries of interest.
The Importance of Commercialisation
Most South Africans are probably not aware of patenting procedures, or how to file PCT applications, says Cochrane. He adds that patenting is very important, and is essentially there to support the com- mercialisation of an invention.
“It’s of no use to take an invention that is only going to be used in South Africa and file patents for international markets. You are wasting your money. Further, there’s no use in taking an invention and com- mercialising it internationally if you haven’t filed a patent for it, because you’re not going to benefit from your invention. Commercialisation and patenting go hand in hand,” he explains.
Cochrane further stresses the importance of ensuring the product is commercially viable and that it is protected. “You have to have a strategy to protect your invention from the start, and have to look at the most cost-effective way of doing it.”
Cochrane believes that South Africa has great potential for innovation, but says it is not translated into innovation that can be protected and commercialised inter- nationally.
“It can help to protect the patents, but to make all the costs worth their while, com- panies need to work on commercialising their products. This, to me, is more important, and actually more difficult, than patenting,” he says.