The Court of the Commissioner of Patents recently handed down a decision which brings long awaited clarity and relief to the patent profession and applicants in South Africa. The issue before the court was whether an applicant for a patent may request an extension of time within which to publish acceptance of a complete specification after the expiry of the prescribed three-month period.
When a complete patent specification is accepted in terms of section 40 of the Patents Act, 57 of 1978, the applicant must arrange for the acceptance to be published in the Patent Journal within three months of the date on which acceptance was issued.
In this regard, section 42(3) of the Patents Act provides:
Unless the acceptance [of a complete specification] 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 good cause shown and on payment of the prescribed fee, allow, the application shall lapse. [our emphasis]
Regulation 46 further provides:
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 P 4.
In this case, the Registrar of Patents issued a notice of acceptance and acceptance was inadvertently published in the monthly issue of the Patent Journal after the expiry of the prescribed three-month period. The patentee made a request to the Registrar to extend the time period within which to publish acceptance until the date on which it was actually published. The request was based, inter alia, on section 16(2) of the Patents Act, a general provision which empowers the Registrar of Patents to grant extensions of time made after the expiry of a time limit "save as is otherwise expressly provided".
The Registrar refused the request on the basis that he was bound by the decision of University of Pretoria v Registrar of Patents 2011 BIP 411 (CP) "the University matter". That case was decided by the Court of the Commissioner of Patents more than 10 years ago, in which the Commissioner found that the words "the application shall lapse unless" in section 40 of the Patents Act, dealing with acceptance of a patent application, constitutes an express, specific prohibition on extending a time period after its expiry in terms of section 16(2). The Commissioner in the University matter made similar statements concerning section 42(3). Therefore, in the case in issue, the Registrar was of the view that he was not empowered to grant the request insofar as it was made after the expiry of the prescribed period.
The patentee therefore appealed against the decision of the Registrar of Patents to the Court of the Commissioner of Patents.
The court noted the applicant's argument that the University matter was distinguishable from the facts in issue because the University matter dealt with acceptance of a patent specification as opposed to publication of acceptance. The court in the University matter was therefore not binding authority to determine whether the application to extend the time period for publication in terms of section 42(3) could be made after the prescribed period.
The court then reviewed previous decisions, including the case of Trustco Group International (Pty) Ltd v Vodacom (Pty) Ltd and Another BIP 27 (SCA) and found that the time period provided for in section 42(3) could be extended after its expiry and granted the extension of time.
The court also noted that it was evident that a restrictive interpretation would destroy the patentee's right to a patent particularly in instances where there is a bona fide and reasonable explanation for the delay and that it would be more prejudicial when it was not within the patentee's control.
Mu Mecanicos Unidos S.A.S was represented by Adams & Adams.
Click HERE to view the judgment
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