MyPatent.co.za

Do

 

• Ensure that intellectual property developed by contractors are assigned to you in writing

• Conduct a search through freely available internet patent databases before filing a patent application. To be patentable, the invention cannot have been disclosed anywhere in the world whether orally, in writing, by use or otherwise

• Ensure that the patent application cites all inventors that contributed features mentioned in the claims / features to be claimed in the complete application

• File a provisional patent application first if you foresee making improvements / modifications to the invention during the coming year or if you intend to file patents in more than three foreign territories

• Ensure that your provisional patent specification includes proper drawings (without dimensions)

• Set out your patent filing strategy at an early stage to ensure sufficient cash flow, when required

• When considering your patent filing strategy, consider the acts that you wish to prevent people from performing – making, using, disposing (including offering to dispose), exercising (a method) and importing – focus on territories where the patented product can be made or imported/used

• Mark your product with your patent number, once registered. This will enable you to claim damages for infringement
• File corresponding patent applications in foreign countries or a PCT patent application within 12 months of filing your first patent application (typically your provisional patent application from which you claim priority)

• File a PCT application if you intend to file patents in more than three foreign territories, but ensure that you simultaneously file applications in non-PCT member countries

• Consider tax and exchange control issues when assigning patents

• Claim related R&D (s11D) tax incentives (calculated at 150% of R&D salary and consumables cost)

 

Don’t

 

• Disclose your invention to anyone before filing a patent application, unless such disclosures are subject to confidentiality undertakings

• Use puffery in your patent specification or claim that your invention solves various problems. A patent is not a marketing document

• Make a profitable sale using your invention before filing a patent application

• Post-date your provisional patent application if you intend to file corresponding patents in foreign countries

• Re-file your provisional patent application if the invention has been disclosed to the public in the interim

• Institute infringement proceedings in respect of your South African patent until 9 months following grant

• Threaten anyone with your granted patent without first sending a polite, non-threatening letter informing the person of your patent, citing your patent number and attaching a copy of your patent

• File a patent in the name of two or more applicants unless the applicants have concluded a joint ownership agreement

• File your patent in the name of a foreign entity without first obtaining exchange control approval

• File patent applications for business methods, methods of playing a game, methods of performing a mental step, scientific theories; or mathematical methods. Obtain professional advice if you wish to patent a computer program

• Grant an exclusive licence without appropriate escape clauses or minimum royalty provisions

 

Maybe

 

• Keep your invention secret (or ensure disclosures are subject to Confidentiality Undertakings) until filing a complete/PCT application, despite having filed a provisional patent application. Although this is not necessary to maintain the validity of your patent, it will give you more options should you wish to extend the period for filing PCT or foreign patent applications

• Consider filing design applications together with your patent application

• Consider protecting not only the product but also the method of making the product, the method of using the product and the machinery to manufacture the product

 

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