South Africa, being blessed with an abundance in natural resources, naturally, sees its fair share of patent applications directed towards a process or apparatus for producing a product. In terms of the patent law of South Africa there is no substantive difference between the patentability requirements for a patent directed towards a product or a patent directed towards a process. There are, however, important and significant differences between product and process patents when it comes to the enforcement thereof.
Corresponding to Article 64(2) of the European Patent Convention, section 61(1) of the Patents Act of South Africa (hereinafter referred to as "the Act") provides that "a claim in respect of a patent for a process or an apparatus for producing any product shall be construed as extending to such product when produced by the process or apparatus claimed". Although this section has not yet been interpreted by a South African court, it is expected that, keeping with tradition in matters related to patents, a South African court faced with the task of interpreting section 61(1), would most likely refer to and be instructed by decisions reached on such a matter in either the United Kingdom or Europe; South African patent law being similarly aligned to European patent law.
In view of this protection being afforded to a product of a patented process, it has become local practice to not include a claim directed to a product of such a process, and it has even been said that "... the insertion in a specification of a claim to a product of a process or of an apparatus claimed would ... be redundant and, indeed, reflect poor practice on the part of the specification draftsman". There is certainly merit in this statement, however, should a very specific instance (discussed directly below) arise, a patentee may very well thank his lucky stars for such "poor practice on the part of the specification draftsman".
The background to which the discussion under this article relates is the restoration of a patent which lapsed due to the non-payment of renewal fees (in terms of the Act, annual maintenance fees are to be paid). A patentee is, as of right, afforded an extension period of six months to make payment of any outstanding maintenance fees, barring which, the patent will lapse. Should the patentee omit to pay within the six-month 'grace period', the patentee would need to bring an application for the restoration of the lapsed patent before the registrar of the Court of the Commissioner of Patents. The registrar will then advertise the said application (thereby affording third parties a two-month period to lodge an objection to the restoration of the patent) if he/she is satisfied that (i) the omission to pay the renewal fee was unintentional; and (ii) no undue delay has occurred in making the application for restoration. If there is no opposition to the restoration, the registrar may issue an order restoring the patent. Rights restored and back to business as usual? Not so fast...
The Act (section 48(1)) continues to provide that a patentee of a restored patent is not entitled to institute any proceedings against or recover any damages from any person who:
- infringed the patent after the lapse of a period of six months from the date on which the renewal fee was due and before the date on which the application for the restoration of the patent was advertised;
- used, offered to dispose of or disposed of any article made or imported in the period referred to in paragraph (a); or
- (i) during the period referred in paragraph (a) commenced using or exercising the invention to which the patent relates and who thereafter continues to use or exercise the invention; or
(ii) uses or offers to dispose of or disposes of any articles or products produced by the continued use or exercise referred to in subparagraph (i).
Immediately, upon reading section 48(1), one realises that paragraphs (a) and (b) pertains to patents directed towards a product, whereas paragraph (c) is relevant to patents directed towards a process.
Furthermore, it is noted that there is a significant difference between the rights afforded to a patentee of a restored patent in these provisions. A patentee of a restored patent directed towards a product may, in terms of subsections (a) and (b), launch proceedings against a person referred to therein to stop the continued infringement (after the patent has been restored) of the patent.
In stark contrast hereto, as per paragraph (c), a patentee of a restored patent directed towards a process may not, even after the patent in issue has been restored, bring any proceedings to stop a person referred to therein from continuing with the infringement of the process to which the patent is directed (paragraph (c)(i)), or, from using, offering to dispose of or disposing of a product obtained by the said process (paragraph (c)(ii).
In view of the above and, the fact that no excess claim fees are payable in South Africa, it is submitted that it would be good practice to include (should the subject matter of the specification allow for this) a product or product-by-process claim in a patent specification, thereby guarding against the dire consequences of section 48(1)(c) of the Act.
KISCH IP, being the oldest intellectual property law firm in South Africa, draws on the extensive knowledge and experience of our past and present patent professionals, whilst continually identifying new strategies for patent protection to provide proactive patent protection for our clients in an ever changing economic and technological environment.
1 Here, specific mention should be made to the House of Lords' finding in Pioneer Electronics Capital Inc and another v Warner Music Manufacturing Europe GmbH and another  RPC 757.
2 Burrell T.D, Burrell's South African Patent and Design Law, Fourth Edition (2016), LexisNexis, p.68.
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