The buzz about Buzbee
Buzbee (Pty) Ltd v. The Registrar of Patents and Two Others was an appeal of the Registrar of Patent’s decision to allow a one-day extension of time, ex post facto, within which to file a counterstatement in response to an application for revocation of South African patent 2002/8482. In terms of Patent Regulation 90(1), a patentee must serve and file a counterstatement to an application for revocation within two months of its service and lodging (or on extension of that period), failing which the patent will be deemed revoked.
In this case, the patentee’s attorney had inadvertently omitted to serve and file the counterstatement within the prescribed time period, but eventually filed it the day after the deadline had expired. The appellant (as applicant for revocation) was unwilling to agree to an extension of time for the purposes of filing the counterstatement, which caused the patentee to apply to the registrar for an extension.
The registrar granted the extension, despite the appellant’s protest that any decision to grant the extension of time after expiry of the stipulated deadline was invalid. This led to the present appeal before the Court of the Commissioner of Patents.
The commissioner confirmed the registrar’s decision to grant the extension. In support of the decision, the commissioner stated that the patent regulations did not specify any time limit for seeking an extension in order to file a counterstatement. Accordingly, it could be applied for and granted ex post facto, as in the present case.
“A patentee must serve and file a counterstatement to an application for revocation within two months of its service and lodging (or on extension of that period), failing which the patent will be deemed revoked.”
In fact, the registrar had unlimited discretion to grant the requested extension. In support of this statement, reference was made to Regulation 16, which governs the exercise of discretionary powers by the commissioner and registrar. Where no express provision is otherwise made in the act, the registrar can according to his discretion allow for the extension of certain time periods (either before or after their expiry). The registrar had therefore acted appropriately in granting the requested extension.
Further, the judge noted that the Patents Act contained a numerus clauses list of grounds for the revocation of a patent. The complete listing of grounds for revocation is recited in Section 61 of the act. While the Minister of Trade and Industry was empowered by the act to make certain regulations (as subordinate legislation) pertaining to the act, no power was conferred on the minister to introduce a further ground of revocation outside of Section 61, as was done in the terms of Regulation 90(1).
The deeming provision of Regulation 90(1) was therefore contrary to the act and consequently held to be pro non scripto and of no force and effect, in so far as it related to the revocation of a patent.
The judgment, which in the writer’s view is a good one, leaves some doubt as to what the position would be in cases where an application for revocation is uncontested by a patentee. A possible solution would be an amendment of Regulation 90(1) to allow an applicant for revocation, after the expiry of the two-month time period, to proceed to set down the revocation proceedings for determination by the commissioner as an undefended motion.
At any time before the undefended matter is moved before the court, a patentee should be entitled to tender its counterstatement, which would then transform the proceedings into an opposed application. Ultimately, this is a matter for the South African legislature to decide.
Muhammed Vally is a director in the patents department at DM Kisch Inc. He can be contacted at: muhammedv@dmkisch.com
