Prinsloo, J sitting as the Commissioner of Patents heard an appeal on 3 October 2011 to a decision of the Registrar of Patents, being the first respondent in the appeal, taken on 19 April 2011 refusing two requests by the Appellant for the rectification of the Register of Patents.

Following the Registrar’s refusal, the Appellant, the University of Pretoria represented by D M Kisch Inc., sought an order in terms of section 52 of the Patents Act 57 of 1978 (“the Act”) that the Registrar’s decision and/or ruling dated 19 April 2011 be set aside and the Register be rectified by marking South African Patent no. 2004/2575 (“the 2004 patent”) and South African Patent no. 2005/08679 (“the 2005 patent”) as lapsed. Where applicable, reference will be made to “the 2004 application” and “the 2005 application” instead. The second and third respondents were Bone S.A. and Nicolaas Duneas, respectively, as joint patentees of the 2004 patent and the 2005 patent. The Commissioner upheld the appeal and it was ordered that the Patent Register be rectified by indicating that the 2004 patent and the 2005 patent had incurably lapsed.

Summary of the prosecution history of the 2004 application and the 2005 application
Upon entry of the national phase in South Africa on 1 April 2004, the second and third respondents made a first application for the extension or delay of the time for acceptance of the complete patent specification of the 2004 application until 1 October 2005 (an 18 month delay of acceptance). However, on 1 October 2005, being the acceptance deadline for the application, the formalities in respect of the application had not yet been complied with, in that, a power of attorney and deed of assignment were still outstanding.

On 27 October 2005, after the expiry of the extension period, the second and third respondents lodged the outstanding power of attorney and deed of assignment and simultaneously made a second application in terms of section 40 of the Act for an extension of time for the acceptance in respect of the 2004 application until 1 November 2005, which extension was granted. Acceptance in the 2004 application was eventually issued on 17 November 2005 (the delay of acceptance from 1-17 November was due to operational constraints of the Patent Office and not due to any fault on the part of the second and third respondents and is sanctioned by the provisions of section 40(c) and was therefore not irregular) and published in the Patent Journal on 22 February 2006, which was more than 3 months after the date of acceptance of 17 November 2005, in contravention of section 42(3) of the Act.

The 2005 application was a fresh application (more commonly known as a divisional application) in terms of section 37(1) of the Act which stemmed from the 2004 application. The fresh application was made after 1 October 2005, on 26 October 2005 when, on the argument of the Appellant, the 2004 application had already lapsed. Consequently, the fate of the 2005 patent was linked to the fate of the 2004 patent such that the result of the appeal in respect of the 2004 patent would also apply to the 2005 patent.

The main thrust of the Appellant’s argument was that the 2004 application lapsed, in the spirit of section 40, on 1 October 2005. The Appellant argued that section 40, which deals with lapsing of patent applications, was couched in peremptory language. Section 40 provides that, unless a complete specification has been accepted within 18 months from the date of application, the application shall lapse, provided that the applicant may apply for an extension of the acceptance of the complete specification.

The Registrar ruled that the second application for extension of time for acceptance in respect of the 2004 application until 1 November 2005 was not irregular as it was granted in terms of section 16(2) of the Act. Section 16(2) states that whenever any time is specified within which any act or thing is to be done, the Registrar or the commissioner, as the case may be, may, except where it is otherwise expressly provided, extend the time either before or after its expiry.

Contrary to the ruling of the Registrar, Prinsloo, J found that reliance on the general provision (sec 16(2)) is not justified in the face of express provisions contained in section 40 which states that a patent application “shall lapse” if the complete specification is not accepted within an initial period of 18 months.

A further point to be decided was whether the 2004 application lapsed because it was not published within three months from the date of acceptance. Section 42(3) provides that unless the acceptance is published in the Patent Journal within the prescribed period, which is 3 months in terms of regulation 46, or within such further period as the Registrar may, on application to him and on good cause shown and on payment of the prescribed fee, allow, the application shall lapse.

The Registrar ruled that the applicant is in compliance with section 42(3) and regulation 46 if the acceptance is advertised within three consecutive publications of the Patent Journal immediately after the acceptance date even though advertisement takes place a few days after the three month period. The Registrar considered this to be a trivial procedural irregularity and followed a general approach by granting at least a reasonable extension of time.

Prinsloo, J concluded that section 42(3) is also drafted in peremptory language as it requires for application to be made on good cause and payment of a prescribed fee. No application for extension of the time for publication beyond 3 months was made, let alone good cause shown or payment made. Consequently, it was held that the 2004 patent also lapsed for lack of compliance with section 42(3) of the Act.

This decision is a wake-up call for lackadaisical applicants and practitioners alike and sounds a clear warning that lack of compliance with the peremptory requirements of the Act and Regulations will be fatal for the parties involved.

By Wynand Fourie, Candidate Attorney, Patent Department, Adams & Adams
Reviewed by Stephan Ferreira, Partner, Patent Department, Adams & Adams