IN THE COURT OF THE COMMISSIONER OF PATENTS /ES
(REPUBLIC OF SOUTH AFRICA)
DELETE WHICHEVER IS NOT APPLICABLE
(1) REPORTABLE: YES / Nflf? feS**^ (2) OF INTEREST TO OTHER JUDGES: / NO.
(3) REVISED.
DATE
1/
SIGNATURE
IN THE MATTER BETWEEN
UNIVERSITY OF PRETORIA
AND
THE REGISTRAR OF PATENTS
BONE S.A.
DUNEAS, NICOLAAS
CASE NO: ZA2004/2575 ZA2005/08679
DATE:
APPELLANT
1 M RESPONDENT
2 RESPONDENT/1 JOINT PATENTEE
JUDGMENT
PRINSLOO. J
2
[1] This is an appeal against the decision of the Registrar of Patents, first respondent
("the Registrar") taken on 19 April 2011, refusing two requests for the
rectification of the Register of Patents.
[2] The second and third respondents are two joint patentees of South African patent
2004/2575 entitled "a cross-linked collagenous biomaterial" ("the 2004 patent")
and South African patent 2005/08679 entitled "a cross-linked collagenous
biomaterial" ("the 2005 patent").
[3] The appellant sought and on appeal seeks an order in terms of section 52 of the
Patents Act 57 of 1978 ("the Act") for an order that the Register be rectified by
marking each of the two aforesaid patents as lapsed.
[4] According to the Register, the complete specification of the 2004 patent was
accepted on 17 November 2005 and a patent granted on 22 February 2006.
The filing and prosecution history of the 2004 patent
[5] The patent was granted on a National Phase entry in South Africa on form P25
dated 1 April 2004 of International Patent application PCT/IB02/03576 filed on
4 September 2002 and designating amongst others. South Africa.
[6] The prescribed national fee was paid on 1 April 2004.
On 1 April 2004, and on form P4, the second and third respondents made a first
application in terms of section 40 of the Act for an extension of time for the
acceptance of the complete specification of the patent until 1 October 2005.
namely for eighteen months.
On 27 October 2004, the Registrar sent a notice relating to outstanding documents
to the patent attorneys representing the second and third respondents. It appears
from the notice that a power of attorney and a deed of assignment were
outstanding.
The outstanding power of attorney and deed of assignment were filed on
27 October 2005. This was well after the expiry of the extension period, supra,
which came to an end on 1 October 2005.
On 27 October 2005, the second and third respondents made a second application
in terms of section 40 of the Act for an extension of time for the acceptance of the
complete specification of the patent, until 1 November 2005.
The complete specification of the patent was accepted on 17 November 2005,
some nineteen months and seventeen days after compliance with section 43E(1)
of the Act. This acceptance was published in the Patent Journal on 22 February
2006. which is more than three months after the date of the purported acceptance.
4
The reference to section 43E arises from the fact that the section deals with
international patent applications under the Patent Co-operation Treaty ("PCT"),
such as the patents now under discussion.
In terms of regulation 45, of the regulations promulgated in terms of the Act, ("the
regulations") an applicant may, subject to the provisions of section 40 of the Act,
request the Registrar to delay acceptance of the application to a date not later than
eighteen months from the date of the application.
In terms of the provisions of section 43F(3)(h) this period of eighteen months is
reduced to twelve months. This section and time period is applicable to the
present case because it was an international application designating South Africa
and, in compliance with section 43E of the Act, the prescribed national fee was
paid on 1 April 2004.
In earlier proceedings before the Registrar, leading up to this appeal, the appellant
contended that in terms of section 40, read with section 43F(3)(h) of the Act, and
in the absence of a proper application for an extension of time for the acceptance
of the complete specification, the complete specification of the application for the
patent ought to have been accepted by 1 April 2005, ie after expiry of the
prescribed period of twelve months. Thus, so it was initially argued, the
application for the patent lapsed on that date. This argument, for purposes of the
5
present appeal, was abandoned by the appellant, and not pursued any further
before me by Mr Preis, S C for the appellant.
Similarly, an earlier contention before the Registrar that the first application for an
extension of t ime did not comply with the provisions of the Act, in that an
extension of eighteen months was requested, which exceeded the statutory
permissible maximum period of twelve months, was also not proceeded with
before me.
The filing and prosecution history of the 2005 patent
[12] On 26 October 2005, a fresh application in terms of section 37(1) of the Act was
made for the 2005 patent.
[13] The second and third respondents, as joint patentees, requested the Registrar to
ante-date the fresh application to the date of filing of the parent application (the
2004 patent) namely 5 April 2004. The request was made in terms of section
37(1) of the Act.
[14] The fresh application for the 2005 patent was made after 1 October 2005 when, on
the argument of the appellant, the 2004 patent lapsed upon expiry of the first
extension period, supra.
6
[15] The 2005 patent was accepted on 17 May 2006 and granted and sealed on 26 July
2006.
[16] Moreover, and on the assumption that the patents had been properly granted, the
annual renewal fees in respect of both patents should have been paid on
4 September 2008, but remained unpaid. Thus, so it was argued by appellant's
counsel, the patents would in any event have lapsed on that date.
The second and third respondents applied to the Registrar for the restoration of the
patents and they were restored on 18 September 2009 and 6 November 2009
respectively.
[17] Before me. no argument was presented with regard to the "lapsing" of the patents
in September 2008.
Representations made to the Registrar and the outcome thereof
[18] The appellant contended that the purported acceptance and corresponding entry in
the Register with regard to the two patents were incorrect and should be rectified
in terms of section 52 of the Act. Letters were written to the Registrar, seeking
entries to be made in the Register to indicate that the two patents had lapsed and
suggesting that if the second and third respondents did not seek rectification of the
Register, it would be incumbent upon the Registrar to mero motu make an order
for such entries to be made in terms of section 52 of the Act. Corresponding
7
demands were addressed to the attorneys acting for the second and third
respondents who declined to comply with the demands.
[19] In September 2010, the appellant's attorneys sought rectification of the Register
by deleting the acceptance dates of the patents, as well as the date indicating the
grant of the 2004 patent, and seeking an entry against both patents indicating that
they had incurably lapsed.
[20] The written ruling of the Registrar, in response to these requests, which ruling is
now challenged before me on appeal, can be summarised as follows:
1. The extension of twelve months in terms of section 43F(3)(h) can
be extended further as provided in section 40 and it cannot be said
that it is a maximum allowable extension under the Act. If one
refers to Schedule 1, item 4(i), it can be seen that there is a
provision for payment of fees for extension of time of acceptance
beyond twenty one months. "Therefore the intention of the
legislature in my opinion is clearly to allow sufficient extension of
time as the Registrar may deem reasonable."
2. The second application for extension of time to prosecution is
granted by the Registrar in terms of section 16(2) and therefore is
not irregular. This is a reference to the extension granted from
27 October 2005 to 1 November 2005 (incorrectly referred to as
2006 by the Registrar). On 1 November 2005 the application was
8
ready for acceptance. The office issued the acceptance notice on
17 November due to operational constraints and not due to any
fault on the part of the second and third respondents. The delay of
acceptance from 1-17 November 2005 is sanctioned by the
provisions of section 40(c) and therefore not irregular. This ruling
about a permissible delay between 1 November and 17 November
in terms of the provisions of section 40(c) was not challenged by
Mr Preis in the proceedings before me. The main thrust of the
argument of Mr Preis is that the application already lapsed on
1 October 2005, when the extension period expired.
As to the second leg of the appellant's argument, namely that the
application also lapsed because the publication of the acceptance
was out of time, the Registrar ruled as follows:
"In order to have his Notice of Acceptance published in the
February Patent Journal, the applicant was required to
submit the notice to the Government Printing Works
("GPW") a month before the publication date, in casu, on
or before 22 January 2006, which date falls well within the
three months period in terms of section 42(3) of the Act
read with regulation 46 of the Patent Regulations. 1978.
To avoid the unnecessary hardship for the applicants to
request extension of time in terms of regulation 46 for
9
every few days when the publication date of the Patent
Journal falls outside of the three months period, the
Registrar in his office practice accepted the approach that
the applicant is in compliance with section 42(3) and
regulation 46 if the acceptance is advertised within three
consecutive publication of the Patent Journal immediately
after the acceptance date."
Alternatively, so the Registrar ruled,
"If the granted extension of time could be considered as
trivial procedural irregularities, it is prudent to say that in
granting the extension of time I was guided by the general
approach as reflected in Burrell: South African Patent Law
& Practice 2 n d edition at 82 and also followed in Bioclones
(Pty) Ltd v Kirin-Amgen Inc 1992 BP 229 (RP):
'The Registrar is mindful of the facts that the majority of
patents and patent applications emanate, or are attacked,
from abroad from whence the local practitioner must obtain
his instructions: that patent matters are invariably complex;
that there is no official examination in South Africa as to
the subject-matter and merits of inventions; and that it is
important in the public interest that disputes relating to
monopoly rights be fully aired and considered and not be
10
denied such consideration by procedural technicalities. In
the light of these factors, the approach of the Registrar
normally is to grant at least reasonable extensions of time
periods. Such a general approach is, it is submitted, a
commendable one.'"
4. The Registrar also pointed out that the current status of both
patents is recorded in the Register as "granted". She ruled that the
requested rectification, if allowed, would in fact amount to a
revocation. The grounds for revocation of a patent are specified in,
and limited by. the provisions of section 61(1) of the Act and
"trivial procedural irregularities" is not one of such grounds. The
Registrar then, in conclusion, stated:
"At last, but not least, the preservation of the status quo is
of a paramount interest of the joint patentees and should not
be jeopardised light-mindedly based merely on the alleged
procedural irregularities."
The grounds of appeal to be found in the notice of appeal
[21] What follows is a brief summary of those grounds:
1. The Registrar erred in finding that the application for the 2004
patent had not lapsed on 1 October 2005 in view of the following:
11
1.1 An extension had been granted by the Registrar until
1 October 2005 for the acceptance of the complete
specification of the 2004 patent.
1.2 On 1 October 2005 the application in respect of the 2004
patent had not yet complied with the requirements of the
Act and was therefore not yet in order for acceptance and
accordingly had lapsed on that date in terms of section 40
of the Act.
The Registrar erred in finding that the application for the 2004
patent had not lapsed on 17 February 2006, since:
2.1 the complete specification of the 2004 patent was
purportedly accepted by the Registrar on 17 November
2005;
2.2 the acceptance was first published in the Patent Journal on
22 February 2006;
2.3 accordingly the application for the 2004 patent had lapsed
on 17 February 2006 in terms of section 42(3) of the Act.
The Registrar erred in finding that the application for the 2005
patent was not in contravention of the provisions of section 37(1)
of the Act since:
3.1 the application for the 2005 patent was filed on 26 October
2005;
12
3.2 as indicated, the application for the 2004 patent had lapsed
on 1 October 2005;
3.3 accordingly, on 26 October 2005 when the application for
the 2005 patent was filed, the application for the 2004
patent had lapsed and the application for the 2005 patent
was in contravention of the provisions of section 37(1) of
the Act.
(At this point I record that, during the proceedings before me, I
was informed by Mr Preis and Mr Hoffman SC for the second and
third respondents, that the parties were in agreement that, for
purposes of this appeal, the fate of the 2005 patent would be linked
to the fate of the 2004 patent, so that the result of the appeal in
respect of the 2004 patent would also apply to the 2005 patent.
Consequently, I will not pay any further attention to this ground of
appeal involving the 2005 patent.)
The Registrar erred in relying on the judgment in Bioclones, supra,
because:
4.1 the Bioclones matter relates to extensions requested and
granted during post-grant litigation proceedings between
the two parties; and
4.2 the appellant's requests for rectification of the Register
relate to pre-grant irregularities during the prosecution of
the applications for the 2004 and 2005 patents.
13
5. The Registrar erred in finding that if the appellant's requests were
to be allowed, it would amount to an act of revocation, because:
5.1 as indicated, the application for the 2004 patent had lapsed
on 1 October 2005, alternatively 17 February 2006;
5.2 as indicated, the application for the 2005 patent was filed in
contravention of the provisions of section 37(1) of the Act
(this need no longer be determined);
5.3 the appellant's requests were for rectification of the
Register in order to reflect the de jure position.
Ground 5, dealing with the Registrar's finding that the requests for rectification, if
allowed, would amount to an act of revocation, did not receive any attention
during the proceedings before me, neither was it dealt with in the heads of
argument presented by second and third respondents' counsel. In my opinion,
there is no merit in this ruling of the Registrar. The rectification requested, has
nothing to do with revocation of a patent, in the spirit of the grounds for
revocation to be found in section 61 of the Act. The rectification sought by the
appellant has to do with the question as to whether or not the application for the
patents had lapsed. Consequently, I do not propose dealing with this particular
issue any further.
I turn to the grounds on which the appeal in respect of the 2004 patent is based.
14
[25] I have pointed out that in this case, the eighteen month period is reduced to twelve
months in view of the provisions of section 43E and section 43F. Despite this, the
Registrar saw fit to grant an extension for eighteen months until 1 October 2005.
The Registrar also did not. as far as I can make out. grant the extension over two
phases, the one for a maximum of three months and then another one as provided
for in section 40.
Did the application in respect of the 2004 patent lapse on 1 October 2005?
[24] Section 40 of the Act reads as follows:
"40. Lapsing of applications. - If a complete specification is not
accepted within eighteen 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: Provided
further that the Registrar may, on good cause shown and on
payment of the prescribed fee. grant a further extension of time."
15
Nevertheless, as I have already recorded, counsel for the appellant did not rely on
these deviations from the peremptory provisions of section 40, and accepted, for
purposes of the appeal, that a proper extension was granted until 1 October 2005.
The main thrust of the appellant's argument is that the application lapsed, in the
spirit of section 40, on 1 October 2005. The section is couched in peremptory
language when it prescribes that the application "shall lapse".
It was not legally competent, so it was argued by Mr Preis, to grant a further
extension on 27 October (until 1 November) 2005 after the application had already
lapsed on 2 October 2005.
It was argued that it was not legally competent to "resurrect" the application in
this way because it had already lapsed.
I have already pointed out that the appellant also did not proceed with an
argument to the effect that, even if the later extension until 2 November 2005 had
been legally competent (which was disputed) the application in any event lapsed
after 2 November because it was only accepted on 17 November, without a
further extension having been granted between 2 and 17 November. This
argument was abandoned because of the Registrar's ruling, supra, that the further
delay was not due to any omission on the part of the second and third respondents,
in the spirit of section 40(c).
16
[27] For purposes of deciding this dispute, careful consideration must be given, in my
view, to the provisions of section 16(2) of the Act which read as follows:
"(2) Whenever by this Act 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, save where it is otherwise expressly provided, extend
the time either before or after its expiry." (Emphasis added.)
[28] In the case of Kaltenbach Thuring Societe Anonyme v Grande Paroisse Societe
2001 BIP 62 (CP) this court, per ROUX, J, heard an application to set aside an
order to found jurisdiction for the attachment of a patent which had lapsed before
the making of the order. It emerged that the payment of the renewal fee on the
patent within the six month grace period had not been made before the expiration
of the relevant year of the term of the patent. It also appeared that the payment
had been made by the agents for the respondent before the application had been
heard by the commissioner who had made the order to found jurisdiction.
[29] This case, of course, dealt with a lapsed patent and not with a lapsed application
as intended by section 40. The relevant provision is section 46(2) which reads as
follows:
"A patent shall lapse at the end of the period prescribed for the payment of
any prescribed renewal fee, if it is not paid within that period: Provided
that the Registrar may upon application and subject to the payment of such
17
additional fee as may be prescribed, extend the period for payment of any
such fee for a period not exceeding six months."
This is the six months grace period referred to above. The payment was made by
the creditors' (respondents') attorney in an effort to "resurrect" the lapsed patent so
that there was an asset capable of being attached.
In granting the application to set aside the attachment, and in considering the
provisions of section 16(2), the learned judge said the following on p64 of the
report:
"Apparently the Registrar accepted the payment and the patent lives on as
an attachable asset so it is claimed. The money was paid within six
months after 6 January 2001. (My note: it is not quite clear whether the
patent had lapsed on 6 January or 16 January 2001 but nothing turns on
this.) Reliance is then placed on section 16(2) of the Act. It reads as
follows:
'16(2) (I am not repeating the wording of 16(2).)'
Reliance on this general section of the Act is not justified as section 46(2)
contains an express provision. The Registrar has no power to ignore the
plain operation of the Act, namely non-payment results in lapsing. The
extension of time to pay renewal fees can only be made before the patent
lapses. It is obvious that the passing of money cannot resurrect a lapsed
patent. Only compliance with section 47 can achieve such a result."
18
Section 47 provides for a procedure whereby a lapsed patent can be restored.
I add that the learned judge also granted the application to set aside the attachment
for other reasons, which need not be considered for present purposes.
Understandably, counsel for the appellant, Mr Preis, relied on the comments of
the learned judge in Kahenbach. It was argued, if I understood Mr Preis
correctly, that, by parity of reasoning, if a lapsed patent cannot be resurrected by
the payment of the renewal fee after the patent had lapsed, a lapsed application
can also not be resurrected by granting of an extension after the application had
lapsed, given the peremptory language used in section 40.
It was argued that, as in Kahenbach, reliance on the general provision, which is
section 16(2), is not justified in the face of the express provisions contained in
section 40 with regard to the lapsing of the application and couched in peremptory
language.
In Weekly Property Trader v L S Erasmus & Another 2002 BIP 303 (T) an
application came before CLAASSEN, AJ (as he then was) to have an application
for the registration of a trade mark (property trader in class 16) marked in the
Register as having been abandoned.
19
The crucial question was whether the Registrar of Trade Marks was entitled, in
terms of section 45(3) of the Trade Marks Act 194 of 1933, to grant an extension
of time after the lapse of the period allowed for completing the application in
terms of section 20(2) of the Act.
Section 45(3) of the Trade Marks Act contains provisions similar to those of
section 16(2) of the Act:
"Whenever by this Act any time is specified within which any act is to be
performed or a thing is to be done by any person, the Registrar may, on
application by that person, and unless otherwise expressly provided,
extend the time either before or after its expiration."
On p306 of the report, the learned judge, in following and applying Kahenbach,
said the following:
"I agree with ROUX J that the discretion conferred upon a Registrar to
extend a time period cannot override a specific declaration of
abandonment if set out clearly in the Act. If that were not so, an
application like the applicant's could be extended indefinitely with no
certainty as to the end thereof or to other prospective applicants. And I
cannot find on reading of his judgment, that ROUX J was wrong.
Therefore the Registrar was not entitled to grant an extension of time of an
application which had been deemed to have been abandoned."
20
The case of Gateway Communications (Pty) Ltd v Gateway Data
Communications & Another 2005 BIP 186 (T) involves an application for a
declaration that the entry of the registration of the trade mark Gateway Data
Communications GDC had been wrongly made, and there was also an application
for an order directing the Registrar of Trade Marks to mark the trade mark entry
as abandoned. The matter came before HARTZKNBERG. ADJP.
It was held that in terms of the provisions of section 25(1) of the Repealed Trade
Marks Act 62 of 1963 the first respondent's application was deemed to have been
abandoned by virtue of the applicant not having taken any "action" as provided
for in section 25(2) of that Act within the period prescribed by the Registrar in a
notice.
It was held that the applicant could not rely on the provisions of section 55(3) of
the Repealed Act because that very section provides that extensions can be
granted "unless otherwise expressly provided". In terms of the maxim generalia
specialihus non deroganl general provisions in legislation do not override special
provisions. According to Hiemstra and Gonin Trilingual Legal Dictionary, 2 n d ed
at p202 this maxim means "algemene voorskrifte doen niks af aan besondere
bepalings nie/general words (rules) do not derogate from special". It was held by
the learned judge that the provision in section 25(2) of the Repealed Act that the
application shall be deemed to have been abandoned is a special provision. On the
21
argument of Mr Preis, supra, the same must no doubt apply to the provisions of
section 40 stipulating, in peremptory language, that an application shall lapse.
Section 55(3) of the Repealed Act contained provisions similar to those of section
16(2) of the Act:
"(3) Whenever by this Act any time is specified within which any act or
thing is to be done, the Registrar may, unless otherwise expressly
provided, extend the time either before or after its expiration."
HARTZENBERG ADJP specifically considered the judgments of ROUX J and
CLAASSEN AJ (as he then was) in Kaltenbach and Weekly Property Trader and
adopted the reasoning of those learned judges.
Mr Hoffman, in his comprehensive address, invited my attention to the case of
University of Pretoria, Adams & Adams and South African Institute of Intellectual
Property Law v Registrar of Patents 2002 BIP 68 (T) which came before a full
court of this division, VAN DER WALT J presiding.
It was an application for declaratory relief. Declarators sought were, inter alia,
that ROUX J, in Kaltenbach, was wrong in his judgment, and particularly in his
interpretation of section 46(2) of the Act. There was also a declaration sought as
to the proper construction to be placed on section 46(2) of the Act and a third
declaration sought was to the effect that the payment of a renewal fee on a certain
22
patent in the time period between the due date of payment and the six month
period referred to in section 46(2) had been correctly accepted by the Registrar.
[44] On p73 of the report, when considering the observation by ROUX J that "The
extension of time to pay a renewal fee can only be made before the patent lapses.
It is obvious that the passing of money cannot resurrect a lapsed patent.", the
learned presiding judge said the following:
"Whether this is a correct interpretation of the Act is in my view on this
aspect of the judgment immaterial. However, in the context of the facts
before the learned commissioner, this statement can only be an obiter
expression of his view which is not binding. The ratio and real reason for
the setting aside of the attachment order was that the patent had lapsed
because that was the intention of its proprietor."
The declarator that ROUX J was wrong was not granted.
[45] It was held, on p77, that, on a proper interpretation of the Act, the interpretation to
be attached to section 46(2) is that a patent does not lapse if a patentee applies
annually for the renewal of that patent during the prescribed period, that is before
its third anniversary date and the six months immediately following thereon,
provided the prescribed renewal and extension fees are paid.
[46] The impact of section 16(2) (or lack thereof) was not considered at all.
23
It may be arguable that the finding of ROUX J is at odds with the interpretation
attached to section 46(2) by the full court which held that the patent does not lapse
if the application for renewal and the payment of the fee take place within the
grace period of six months. On the other hand, this interpretation seems to be
aimed, largely, at establishing when the patent lapses where ROUX J only said
that the extension of time to pay the fees can only be made before the patent
lapses. On this basis, the two findings may even be in harmony with one another.
In any event, the full court declined to find that ROUX J was wrong.
As a final observation on this issue, it can perhaps be noted that the interpretation
attached by the full court to section 46(2), is not "an open-ended" one, in the sense
that it requires the payment and the application to occur within the six month
grace period.
In the case of section 40. which should be considered on its own, there is no grace
period. As stated in the notice of appeal, supra, by 1 October 2005 (when the
extension period expired) the application for the 2004 patent had not yet complied
with the requirements of the Act and was therefore not yet in order for acceptance
so that it had lapsed on that date in terms of section 40 in the absence of a further
application for extension. Section 40 provides that such an extension can only be
granted "on good cause shown and on payment of the prescribed fee". By
1 October 2005, there was no application for an extension at all. let alone "good
24
cause shown" or a prescribed fee paid. This is clearly an express or special
provision which brings the matter inside the ambit of the proviso to be found in
section 16(2). It is also noteworthy, in my view, that section 16(2), as a general
provision, contains no requirement that "good cause" must be shown before the
Registrar or the commissioner can exercise the general discretion to extend a time
period. Even section 46(2), for that matter, contains no requirement for good
cause to be shown.
Finally, where the full court held that the remarks of ROUX J were made obiter.
the same, most certainly, cannot be said about the findings of CLAASSEN AJ and
HARTZENBERG ADJP. I find myself in respectful agreement with those
findings, with the result that I have come to the conclusion that the 2004 patent
application lapsed on 1 October 2005 so that the appeal in that regard ought to be
upheld.
I have to add that Mr Hoffman argued that CLAASSEN AJ erred, firstly because
he failed to appreciate that the dictum of ROUX J was obiter, and secondly
because he failed to appreciate the distinction between the words "lapsed" and
"abandoned". By reference to the appropriate Oxford English Dictionary
definition, Mr Hoffman argued that "abandon" has a far more permanent
connotation than "lapse". Mr Hoffman also argued that HARTZENBERG ADJP
had erred in the same respects as CLAASSEN AJ.
25
[53] Section 42(3) reads:
I find it difficult to appreciate the relevance of the argument that the difference
between "lapse" and "abandon" is central to a decision of the dispute before me.
In any event, the one Oxford Dictionary definition of "lapse" presented to me by
Mr Hoffman reads as follows: "Law. The termination of a right or privilege
through neglect to exercise it within the limited time, or through failure of some
contingency." "Terminate" according to the Oxford Dictionary I consulted, means
"bring to an end" or "bring or come to an end". According to the Bilingual
Dictionary of Bosnian, Van der Merwe and Hiemstra "terminate", in Afrikaans,
means "eindig, ophou, verstryk". "Termination" means "einde; grens;
beeindiging, afloop". To me, there is a clear element of permanence about all
these definitions. I fail to see how it can be argued that "abandon" has a "far more
permanent connotation" than "lapse" in view of the definitions quoted above.
[51] In the result, I consider myself bound by the other judgments referred to, with
which I am in respectful agreement.
Did the application in respect of the 2004 patent also lapse because the publication was
out of time?
[52] Section 42 deals with "notice and publication of acceptance of complete
specification..."
2 6
(3) Unless the acceptance is so published in the journal within the
prescribed period or within such further period as the Registrar
may, on application to him and on g-good cause shown and on
payment of the prescribed fee, allow, the application shall lapse.
[54] Regulation 46 provides as follows:
"Publication of acceptance. - When notice of acceptance of an
application has been given by the Registrar, the applicant shall advertise
the acceptance in the journal within three months of such acceptance or
within such further time as the Registrar may allow on request on
form P4."
[55] It is common cause that the date of acceptance was 17 November 2005 so that the
publication had to take place by 17 February 2006. It is common cause that this
did not happen, and that publication only took place on 22 February 2006.
[56] Both section 42(3) and regulation 46 are couched in peremptory language.
[57] It was common cause before me that there was no application for an extension as
provided for in section 42(3), let alone "good cause shown" or "payment of the
prescribed fee".
[58] I was also referred to regulation 99 which provides:
27
"Time limits. - Time limits specified may be extended by consent of the
parties or, failing such consent, by the Registrar on a request made to
him." (Emphasis added.)
In this case, it is common cause that no request was made to the Registrar.
I have quoted, supra, what the Registrar had to say about this subject in her ruling
which is now being challenged on appeal. I do not propose repeating the
quotation. She declared that the required notice had to be submitted to the
Government Printing Works by 22 January 2006. She spoke about three
consecutive publications. I see no provisions to this effect in section 42 or the
regulations. She appears to say that "to avoid unnecessary hardship" a certain
office practice had been adopted by herself "that the applicant is in compliance
with section 42(3) and regulation 46 if the acceptance is advertised within three
consecutive publication of the Patent Journal immediately after the acceptance
date." There was, in any event, no evidence before me that there were "three
consecutive publications".
I see no basis for a finding that the Registrar is vested with the power to by-pass
or ignore the peremptory requirements of section 42(3), firstly, that there must be
an application to her for an extension, secondly that good cause for such an
extension must be shown and thirdly that payment of a prescribed fee must be
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[60] As to the Registrar's reference to "trivial procedural irregularities" and her
reliance on the Bioclones case, supra, I consider that this argument is ill-founded.
As recorded in the notice of appeal, the Bioclones matter relates to extensions
requested and granted during post-grant litigation proceedings between two
parties. The appellant's requests for rectification relate to pre-grant irregularities
during the prosecution of the applications in respect of the 2004 and 2005 patents.
[61] In the result, I have come to the conclusion that the application in respect of the
2004 patent also lapsed for lack of compliance with the peremptory requirements
of section 42(3) of the Act, so that the appeal ought also to succeed on this
ground.
The order
[62] I make the following order:
1. The appeal is upheld.
2. The decision and/or ruling by the Registrar of Patents, dated 19 April
2011, is set aside and substituted with an order that the Register of Patents
be rectified by:
(a) in the case of South African patent 2004/2575:
(i) deleting the date in the block headed "Acceptance Date";
made. None of these requirements were met. Under these circumstances, as I
understand section 42(3), the application "shall lapse".
2 9
(ii) deleting the date in the block headed "Granted Date"; and
(iii) making an entry against South African patent 2004/2575
clearly indicating that it has incurably lapsed.
(b) In the case of South African patent 2005/08679:
(i) deleting the date in the block headed "Acceptance Date";
and
(ii) making an entry against South African patent 2005/08679
clearly indicating that it has incurably lapsed.
3. The second and third respondents, jointly and severally, are ordered to pay
the costs of the appeal, which will include the costs flowing from the
employment of senior counsel.
W R C PRINSLOO COMMISSIONER OF PATENTS
ZA2004-2575
HEARD ON: 3 OCTOBER 2011 FOR THE APPELLANT: D A PREIS, SC INSTRUCTED BY: D M KISCH INC FOR THE 2 n d & 3 R D RESPONDENTS: G I HOFFMAN SC INSTRUCTED BY: GALGUT & GALGUT