Update on the new Swaziland Patents & Designs Act
15/06/1999

On 10 June 1999, certain of our partners met with the Swaziland Registrar of Patents, who confirmed that the new Act to be implemented shortly is the one that was passed on 19 December 1997 (Act 6 of 1997) and which is very similar to the new Botswana Act in its original, unamended form. (The Botswana Act had to be amended in important respects relating to the transitional provisions shortly after it came into force in August 1996.) The latest information is that Swaziland Act 6 of 1997 will take effect as soon as implementing regulations are in place. The Registrar advised that the regulations are still in draft form and mentioned a possible effective date after 1 August 1999 and before end 1999.

Thus, the good news is that the deadline for obtaining patent or design protection in Swaziland at a low cost, merely by registering an existing South African patent or design registration, has been extended at least until August 1999. However, the bad news is that the transitional provisions of Act 6 of 1997 are limited to UK patents and patent applications and to UK design registrations and applications therefor and, like the new Botswana Act prior to amendment, excludes South African cases.

Section 35 of the Swaziland Act 6 of 1997 contains the transitional provisions, and in terms thereof a person who on the date of entry into force of Act 6, is the owner of a patent or design registration in the UK or has filed an application for the grant of a patent or for the registration of a design in the UK may, within twelve months of the entry into force of Act 6, file in terms of Act 6 an application for the grant of a patent for the same invention or for the registration of the same design. Although section 35 is silent regarding European and PCT applications, in our opinion, (1) an EP application designating the United Kingdom and (2) a PCT application designating the United Kingdom or designating Europe which in turn designates the United Kingdom, will qualify as applications for the grant of a patent in the UK.

The new Botswana Act was amended to include in the transitional provisions, South African patents, registered designs and applications therefor, and to extend the period of applicability of the transitional provisions. We have made representations to the Swaziland Registrar, similarly to extend the transitional provisions of Act 6 of 1997 to South African patents, registered designs and applications therefor, before bringing the new Act into force, and we understand that this is under consideration.

We interpret the transitional provisions of Act 6 as providing a term of 20 years for patents and 15 years for design registrations (subject to payment of maintenance/renewal fees) counting from the filing date of the Swaziland patent or registered design application. However, like the Botswana Act, the transitional provisions are not clear on this point.

In terms of current legislation, UK patent and design registrations extend automatically to Swaziland. The question of whether or not these will continue to be protected under Act 6 of 1997 is uncertain. The generally held view is that when Act 6 of 1997 comes into force, patent and registered design rights in respect of existing UK patents and registered designs will be lost.

At present (i.e. before Act 6 of 1997 comes into force) patent or registered design protection is obtainable in Swaziland by mere registration of the corresponding South African patent or design at a total cost of US $500 or $400 respectively. Such a Swaziland patent or design registration cannot endure beyond the life of the South African patent or design upon which it is based. When the South African patent or design lapses or expires, so does the Swaziland patent or design registration.

To summarise, in the light of the above, it appears that the following options will be available if Act 6 of 1997 takes effect in its present form.

• UK patents, design registrations, or applications therefor are eligible in terms of the transitional provisions of Act 6 of 1997, to support the filing of corresponding applications in Swaziland when the new Act comes into force. Such applications are likely to be subjected to the same filing, prosecution, and cost requirements as a regular application.
• Until Act 6 of 1997 comes into force, patent or registered design protection is obtainable in Swaziland by mere registration of South African patents or registered designs. This is an attractive option, particularly if the South African patent or registered design is relatively recent and the potential term of protection in Swaziland is therefore relatively long.
• The owner of any South African patents or registered designs, has the risky option of deferring taking any action for the time being in the hope that Swaziland will follow the precedent set by Botswana and amend the transitional provisions shortly after Act 6 of 1997 comes into force, to include South African patents and registered designs in the transitional provisions. This risk is most unattractive, but may become acceptable in cases where the remaining term of the South African patent or registered design is relatively short.
• A combination of (2) and (3). Registration of a South African patent or registered design in terms of the law now prevailing in Swaziland (ie before Act 6 takes effect), in our opinion is unlikely to preclude the filing of a new application in terms of Act 6 IF Act 6 of 1997 is amended to include South African patents and designs (as happened in Botswana).