Claim amendments in South Africa
This leaves a granted South African patent vulnerable to attack by third parties should the claims be incorrectly drawn or should they be too wide in scope in the light of examination in other jurisdictions.
It is therefore advisable to consider amendment of South African claims subsequent to a successful examination in one or more examining jurisdictions. Under the South African Patents Act, a patent may be amended at any time before or after grant. However, after grant no amendment is allowable if:
The effect of the amendment would be to introduce new matter or matter not in substance disclosed in the specification before amendment;
The specification as amended would include any claim not fairly based on matter disclosed in the specification before amendment; and
The specification as amended includes any claim not wholly within the scope of a claim included in the specification before amendment.
Before acceptance of a patent application, only the first two requirements have to be met.
In the pharmaceutical field, methods of treatment of the human or animal body by surgery or therapy, or of diagnosis practised on the human or animal body are not patentable, nor are claims directed at known compounds for second or subsequent medical indications (purpose limited product claims). A useful expedient to employ with such claims is to convert them to Swiss-style claims.
"A second or subsequent medical use of a known substance is patentable only by way of a Swiss-style claim if the statutory requirements of novelty are met."
Such claims were approved in Elan Transdermal v Ciba Geigy (the only decision thus far by a South African court on the question of the validity of known substances for a new subsequent medical use). It was held that in terms of the Patents Act a known substance or composition can be claimed for use in a method of medical treatment only the first time that the substance is disclosed as being useful in medical treatment.
A second or subsequent medical use of a known substance is patentable only by way of a Swiss-style claim if the statutory requirements of novelty are met, wherein the novelty would rest in the new medical use.
The trend in South Africa, as in other countries around the world, is not to expand the scope of protection afforded to patentees for pharmaceutical patents. Consequently, it is unlikely in the future that legislation will be amended to broaden the current protection afforded to patentees for pharmaceutical compunds.
Dale Verster is a patent attorney at DM Kisch. He can be contacted at: dalev@dmkisch.com
