A provisional or complete application?
It is now time to discuss the heart of patent applications — the specifications. The patent system has the following underlying rationale: if you are willing to disclose how your invention works, you will be given a monopoly, for 20 years, to commercialise that invention. So, when you file your application requesting that monopoly, you must describe how you have met a need or solved a particular problem, and explain how your new process or apparatus works.
To get the patent granted, you must lodge what is called a complete specification. This sets out the chapter and verse of your invention. It has three parts:
- the abstract — a summary of the invention;
- the body — a full description of your invention, illustrating how it works (including drawings if necessary), discussing the state of the art and explaining why your invention is a step forward on the state of the art; and
- the claims — defining for what it is that you are claiming protection.
Read section 32(3) of the Patents Act.
However, the lawmaker (Parliament) recognises that it is often difficult to come up with something as detailed, comprehensive and final as a complete specification (in all its three parts). Let’s say you work in the laboratory of a medical research company, in a race against time to come up with a treatment for COVID-19. So are three other pharmaceutical companies, all competitors of yours in this potentially very lucrative market. You come up with a new drug which your team is convinced to be the answer, but you have not researched and developed it to the full extent so you can lodge what will be a complicated complete specification. You will nevertheless want to be able to stake a claim to the new drug.
This is where the provisional specification comes into it. So long as you can fairly describe your invention, you can file a provisional specification. From the date of that filing, you have 12 months to conclude the R&D and eventually file the complete specification, if you still want to obtain the patent. Of course, priority is important — and your priority will date from the filing of the provisional application.
Hence, if you have an idea for an invention, you can apply for a provisional patent. In this application, you must fairly describe your invention. However, it is only provisional — within 12 months, you must file your complete specification, comprising the abstract, full description and explanation (the body), and your claims. These should not go beyond what has been explained in the provisional specification. Technically, they can; but you will not get the benefit of the filing date of your provisional application.
You do not have to file a provisional application first. If you are ready with your complete specification, just do it. South African patent applications are often filed right from the start with complete specifications. This has a relationship to the international position, and we look at that shortly.