Breathing life into expired patents


Jaco Theunissen

Judge Southwood, sitting as the Commissioner of the Court of Patents, recently handed down judgment in Audiosport International v. The Registrar of Patents, Soundsure CC and the South African Rugby Union.

The court had to decide whether or not a post-expiration amendment of a patent is allowable in order to limit the scope of the claims.

Patent no. 87/1978, relating to a method of broadcasting and a device, was granted on March 18, 1987 and remained valid until March 18, 2007. In November 2008, the applicant instituted an action for damages suffered due to the respondents’ alleged patent infringement. The respondents counterclaimed for the revocation of the patent on grounds of lack of novelty and inventiveness, and relied on two prior art documents that formed part of the state of the art prior to the priority date of the patent.

The applicant subsequently sought to limit the scope of claims of the patent by way of amendment in terms of sections 51(6) and 51(7) of the Patents Act no. 57 of 1978. The amendment was opposed by the respondents on the grounds that the patent had expired and the applicant therefore had no locus standi to apply for the amendment.

Patent amendment, SCA