Patent Application Pendency in Various Countries: Part 2

This is Part 2 of a four-part series on patent application pendency, grant rates, and effects of lapse in select countries. Part 1 can be found here. Part 2 focuses on Angola, Egypt, Nigeria, and South Africa. Patent Applicants and Practitioners are advised to contact local counsel with any specific questions not covered in this article.[1]

Many clients that have complex intellectual property portfolios often have patents and applications in a dozen or more countries around the world. Effective intellectual property management requires understanding of the client’s goals as well as the differences in rules and procedure in various patent examining jurisdictions, and what patent life, if any, may be expected in return for monetary investment in a given patent examining jurisdiction.  One aspect of global intellectual property management is an understanding of application pendency, grant rates, and effects of lapse in countries where the client desires protection.  

This series of articles is meant to aid Applicants in deciding where to spend resources to obtain patent coverage by provide information regarding 1) substantive examination, 2) the length of time expected between filing and the first action from the patent office, 3) the length of patent term, 4) potential consequences of allowing an application to go abandoned should the applicant not want to pay the grant fees or annuities[2], and 5) the current state of the patent examination process. The information is presented on a country-by-country basis.

Republic of Angola

Angola is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Angola must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Compared to many countries, Angola has relatively few applications filed by non-residents and residents alike, with a spike in applications filed by non-residents in 2018 and 2019.[3] 

Over this same time period, the number of patents being granted in Angola has been less than 10, with 2020 being an outlier for patents granted to residents.[4]

Angola recognizes Utility Patents. Utility Patents are given an initial patent term of 5-years from the date of grant in Angola.  The term may be extended twice, each with 5-year terms, for a total patent term of 15-years from the date of grant. Utility Patents have historically only undergone formal examination.  However, the Registrar has conducted some basic substantive examination, usually ending with a request that the claims are amended to align with the claims as amended under Chapter II of the PCT, or those granted in another jurisdiction. 

For applications that only undergo formal examination, applications are published twice in Angola.  The first publication occurs within 18-24 months from the national filing date.  After publication, a 60-day opposition period starts, which is extendable for 30-days.  If no opposition is received, the application is then re-published, and the Certificate of Grant is issued. Over the past three years, applications have been proceeding to grant or registration at more regular intervals. Unfortunately, the timing of publication has been highly erratic.

Annuities in Angola are due according to when the application granted. The first-year annuity is payed when the application is filed, and annually thereafter during prosecution and during the life of the patent grant.

In Angola, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. If an application is officially abandoned by filing a notice of abandonment, there is a required official fee.

Finally, similar to publication, patent examination in Angola has been erratic as to the time between filing and first action, if a first action is issued.  In some cases, a delay of 5-years or more can be observed.  The time frame for the Registrar to conduct examination and issue an office action has not been clearly established.  

Arab Republic of Egypt

Egypt is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Egypt must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Egypt has seen the number of applications filed by non-residents drop slightly, but otherwise remained relatively stable.[5] The number of applications filed by residents has generally trended upward over the same time period.

Over this same time period, the number of patents being granted in Egypt has generally trended upward.[6]

Egypt recognizes Utility Patents and Utility Models. A request for examination is compulsory in Egypt to avoid abandonment and must be requested at the time of filing the application, or within 6-months from the local filing date. Utility Patents are given a patent term of 20-years from the date of filing in Egypt.  Utility Models also undergo substantive examination. Utility Models are given a patent term of 7-years from the date of filing, which is not renewable.

Annuities in Egypt are due according to when the application is filed. For Utility Patents, the first annuity is paid with the filing fee and annuities are paid annually from the second year after filing.  For Utility Models, the annuities are also paid with the filing fee and are paid annually thereafter. Egypt provides a 1-year grace period for paying late annuities with a corresponding surcharge.

In Egypt, other than loss of patent rights, there are no negative implications for allowing an application to lapse, such as debt owed by the Patent Owner. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, patent examination in Egypt has been fairly routine, with some backlogs rarely exceeding 4-years. An Applicant can expect a first formality examination to occur within 3-months of filing the application. The fee for performing substantive examination is then due within 6-months and an Applicant can expect a substantive examination report to be issued with 2-years. For some applications, a small fee may also be required by the patent office to study the Arabic translation as filed.

Federal Republic of Nigeria

Nigeria is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in Nigeria must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 30-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, Nigeria has seen the number of applications filed by non-residents stop in 2013 and starting 2016 slowly recovering.[7] 

Over this same time period, the grants in Nigeria stopped in 2014 and 2015, resuming in 2016.[8]

Nigeria recognizes Invention Patents. There is no official request for examination in Nigeria. The Nigerian PTO only performs formal examination which takes places automatically with no office actions issued. Invention Patents are given a patent term of 20-years from the date of filing in Nigeria.  

Annuities in Nigeria are due starting from the date of filing and annually thereafter if the patent is to remain pending or in force.  It is noted, however, that as the law is not explicit as to annuity start date, some local agents suggest annuities are only due after grant.

In Nigeria, other than loss of patent rights, there are no negative implications for allowing an application to lapse. 

Finally, patent examination in Nigeria is fairly routine. Because there is no substantive examination, an Applicant can expect a patent to grant within about 18-months from the date of filing. 

Republic of South Africa

South Africa is a party to the Paris Convention and to the Patent Cooperation Treaty. Accordingly, patent applications filed in South Africa must be filed within 12-months of the foreign priority document through provisions of the Paris Convention, or 31-months of the foreign priority application through provisions of the Patent Cooperation Treaty, provided that a PCT application has been filed.

Over the last decade, South Africa has seen the number of applications filed by non-residents remain relatively stable.[9] 

Over this same time period, the number of patents being granted in South Africa has trended downward.[10]

South Africa recognizes Utility Patents. There is no official request for examination in South Africa. The South African PTO only performs a formalities examination. Utility Patents are given a patent term of 20-years from the earliest priority date.  

Annuities in South Africa are due starting from the third anniversary of the filing date and are due each year thereafter if the patent is to remain in force.  

In South Africa, other than loss of patent rights, there are no negative implications for allowing an application to lapse. This is the case whether the application lapses during examination, or if the grant fees and accumulated annuities are not paid. 

Finally, an Applicant can expect a delay of 3 to 5-years for an application to grant under South Africa’s current non-examination system. There is some indication that substantive examination will be implemented, but this is not expected to occur within the next couple of years.

Part 1 of this series focused on select countries in South America. Part 3 of this series will focus on selected Gulf States. Part 4 of this series will focus on selected countries in South East Asia and Oceana.