Most Read Contributor in South Africa, September 2016
The recent case of Gallagher Group Ltd v IO Tech
Manufacturing (5 August 2013, unreported) may well be one
of the most important patent cases in recent times impacting on
South African patent validity. Some background to the case is
important. South African patent law requires that an applicant for
a patent completes a Form P3 declaration in which the patent
that the inventors of the invention are the
persons named as inventors and the applicant has
acquired the right to apply for the patent by virtue of
a valid transfer of rights from the
that to the best of the applicant's knowledge and belief,
if a patent is granted on the application, there will
be no lawful ground for the revocation of the
if the application is a convention application, that the
earliest application from which priority is claimed is
the first application in a convention country in
respect of the invention claimed.
The content of this declaration should receive careful
consideration, as it is a ground for revocation of a patent in
terms of Section 61(1) (g) of the South African Patents Act, should
this declaration contain a false statement or representation which
is material and which the patentee knew or ought
reasonably to have known to be false at the time when the
declaration was made.
In the Gallagher case the court considered the question of
whether or not it is possible to subsequently amend a patent
application to rectify a material statement or representation made
in the Form P3 declaration which was known to be false, or ought
reasonably to have been known by the patent applicant to be false,
at the time of making the statement. If not, the false statement or
representation may render a granted patent invalid with no means of
rectifying the invalidity, and accordingly no means of defending
the patent against revocation proceedings in this regard.
In his analysis of the matter, Judge Kollapen referred to
previous case law in which it was found that it is the sole
responsibility of the patent applicant to consider the facts
carefully in making the declaration and that the patent applicant
must act in "the utmost good faith" when making the
declaration. Judge Kollapen also considered the meaning of Section
61(1)(g) of the Act and held that there is a timeline set when
assessing the falsity of a material misrepresentation, which is
"at the time when the statement or representation was
made". He also considered that it was a matter of
public policy to prevent dishonest patentees from being able to
abuse the system by merely making subsequent amendments to an
application to rectify a falsity should they be found out and need
to do so.
What does this mean for South African patent applicants and
patentees? It is likely that in light of this case many granted
South African patents may in fact be invalid with no means of
rectifying the invalidity. It is essential that a patent applicant
considers carefully whether there are any possible
issues regarding validity of the patent application
and rectifies these
issues before signing and lodging the
Form P3 declaration. Such issues may, amongst others, include any
objection raised by an examiner pertaining to validity of the
patent in any Search Report or Written Opinion issued during the
International Phase of a PCT application, or in any corresponding
foreign application. Should the patent applicant consider that such
an objection is valid, it is important to amend the South African
patent application before signing and lodging the Form P3. Only if
the invalidity is one which the patent applicant was not aware of
and ought not reasonably to have known at the time when making the
declaration, is there no problem with the Form P3 declaration.
Nevertheless, any patent invalidity should be corrected as soon as
the patentee becomes aware of it.
A Form P3 declaration may be late-filed on payment of a small
additional fee, should these issues not be resolved before the
deadline for filing a South African complete or national phase
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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