1 February 2012Jurisdiction reportsJaco Theunissen

Rectifying the register: lapsed patent applications in South Africa

The appellant (University of Pretoria) earlier made a formal request to the registrar to rectify the register with regard to entries made in relation to South African Patent nos 2004/2575 and 2005/08679, both of which are titled ‘A cross-linked collagenous biomaterial’. The appellant’s requests were denied, leading to the appeal to the Commissioner of Patents.

This case underlines the importance of strict adherence to the peremptory provisions of section 40 and section 42(3) of the South African Patents Act 57 of 1978 during prosecution of an application for a patent. If the complete specification is not accepted within the prescribed period, or within such extended period as the registrar may upon request grant, the application shall lapse.

Furthermore, unless the acceptance is published in the patent journal within the prescribed period or within such further period as the registrar may upon application allow, the patent application shall also lapse.

Prosecution history

On April 1, 2004, the application for the 2004 patent entered the South African national phase following an international application dated September 4, 2002. Also on April 1, 2004, the patent applicants made an application for an extension of time for the acceptance of the complete specification for a period of 18 months, ie, until October 1, 2005.

It appears that the reason for the application for extension was that the patent applicants were awaiting the results of a search conducted in respect of a foreign application that corresponded to the one in question.

This practice is not uncommon in South Africa, due to the fact that the South African Patent Offi ce is not a substantive examination authority, and reliance is oft en made on search reports generated by otherjurisdictions in corresponding foreign applications in order to determine the best approach for the prosecution of a South African application.

The request was made in terms of section 40 of the Act, which stipulates as follows:

“If a complete specification is not accepted within 18 months from the date of an application, the application shall lapse unless:

• (a) An appeal has been lodged in respect of the application;

• (b) The time within which such appeal may be lodged has not expired; or

• (c) The delay in accepting the specification was not due to any act or omission on the part of the applicant.

"Provided that where an application is made for an extension of time for the acceptance of a complete specification, the registrar shall, on payment of the prescribed fee, grant an extension of time to the extent applied for, but not exceeding three months; and provided further that the registrar may, on good cause shown and on payment of the prescribed fee, grant a further extension of time.”

On October 27, 2004, and again on September 30, 2005, the registrar requested outstanding documents from the patent applicants in order to get the application ready for acceptance. These outstanding documents were eventually filed on October 27, 2005.

On the same day, the patent applicants made a further application to the registrar in terms of section 40 for a further extension of time, this time until November 1, 2005. This was also granted. The complete specification was subsequently accepted on November 17, 2005, and the acceptance was published in the patent journal on February 22, 2006.

The application for the 2005 patent was filed on October 26, 2005, in terms of section 37(1) of the act, which provides for so-called divisionalpatents. The patent applicants requested the registrar to antedate the application for the 2005 patent to April 1, 2004, and the complete specification in this application was accepted on November 27, 2005.

Request to the registrar

On October 11, 2010, and in terms of section 52 and regulation 39, the appellant formally requested the registrar to rectify the patent register in respect of the 2004 and 2005 patents, by deleting the acceptance date for both patents and the granted date for the 2004 patent, and to mark both patents as “incurably lapsed”.

One of the appellant’s main reasons for the requests was that the acceptance of the complete specifi cation of the 2004 patent application on November 17, 2005, was well after October 1, 2005, ie, the extended deadline for acceptance in terms of section 40. An additional ground raised by the appellant was that the publication of acceptance of the complete specifi cation (if proper) on February 22, 2006 was aft er the three-month period prescribed by section 42(3) and regulation 46 had expired.

As far as the 2005 patent was concerned, the appellant contended that the application for the 2005 patent on October 26, 2005, was made after the application for the 2004 patent had lapsed, and was accordingly in contravention of section 37(1) of the act.

The registrar decided, however, not to deviate from the status quo, and provided the appellant with written reasons for not rectifying the register. These reasons included that the further extension until November 1, 2005, fell within a general discretion granted to the registrar by section 16(2) of the act, and the extension beyond October 1, 2005, was therefore not irregular.

The appellant’s submission that the application for the 2004 patent had lapsed due to the patent applicants’ failure to have it published within three months of acceptance, was also dismissed, the reason being that the registrar had adopted a practice of accepting that an applicant had sufficiently complied with section 42(3) and regulation 46, if the acceptance had been advertised within three consecutive publications of the Patent Journal after the acceptance date.

The registrar’s final reason for refusing the appellant’s requests was that the status of the patents was indicated in the register as “granted”, and that the requested rectification would amount to revocation of the patents. The registrar contended that such “revocation” on the ground of “trivial procedural irregularities” was not recognised as a ground for revocation in terms of section 61 of the act.

Appeal to the Commissioner of Patents

The appellant accordingly appealed to the Court of the Commissioner of Patents. The main ground of appeal was that the application for the 2004 patent had lapsed on October 1, 2005, because the application was not ready for acceptance on that date. The appellant contended that the further request for an extension of time on October 27, 2005, was out of time and therefore not proper.

In this regard the appellant contended, and the commissioner confirmed, that section 40 was peremptory in providing that an application “shall lapse”, and that such absolute wording did not allow for extensions or other remedial steps after the fact.

With reference to the decisions in Kaltenbach Thuring Société Anonyme v Grand Paroisse Société, Weekly Property Trade v LS Erasmus and Another and Gateway Communications (Pty) Ltd v Gateway Data Communications and Another, it was ruled that in view of the peremptory language of section 40, the general discretion provided to the registrar in section 16(2) did not apply.

An additional ground of appeal was that the application had lapsed, because the publication of the acceptance in the Patent Journal was out of time. The commissioner confirmed that the provisions of section 42(3) and regulation 46 were also couched in peremptory language.

The commissioner therefore concluded that the prosecution of the 2004 patent was not in compliance with the provisions of section 40, as well as the provisions of section 42(3) and regulation 46. The patent applicants had earlier conceded that the 2005 patent would be subjected to the same fate as the 2004 patent, and accordingly no arguments were heard in respect thereof.

Conclusion

The commissioner set aside the earlier ruling of the registrar, and ordered the registrar to rectify the register, by deleting the acceptance date of both patents and the granted date of the 2004 patent, and to indicate that both these patents had incurably lapsed. The patent applicants were also ordered to pay the appellant’s costs.

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