BREATHING LIFE INTO EXPIRED PATENTS JURISDICTION REPORT: SOUTH AFRICA
Jaco Theunissen DM Kisch Inc.
Judge Southwood, sitting as the Commissioner of the Court of Patents, recently handed down judgment in Audiosport International v. Te Registrar of Patents, Soundsure CC and the South African Rugby Union. Te court had to decide whether or not a post-expiration amendment of a patent is allowable in order to limit the scope of the claims.
Patent no. 87/1978, relating to a method of broadcasting and a device, was granted on March 18, 1987 and remained valid until March 18, 2007. In November 2008, the applicant instituted an action for damages suffered due to the respondents’ alleged patent infringement. Te respondents counterclaimed for the revocation of the patent on grounds of lack of novelty and inventiveness, and relied on two prior art documents that formed part of the state of the art prior to the priority date of the patent. Te applicant subsequently sought to limit the scope of claims of the patent by way of amendment in terms of sections 51(6) and 51(7) of the Patents Act no. 57 of 1978. Te amendment was opposed by the respondents on the grounds that the patent had expired and the applicant therefore had no locus standi to apply for the amendment.
Te commissioner evaluated the meaning of the term ‘expired’, and noted that the act did not expressly, or by implication, provide that a patent expires. Instead, he concluded that the term of a patent expires, and not the patent itself. Te respondents relied heavily on an excerpt from the Supreme Court of Appeal (SCA) judgment in Ensign-Bickford and Others v. AECI Explosives and Chemicals Ltd, which states that:
“More important, however, is the fact that the patent has now expired so that no amendment could in any event be applied for or be effective.”
Counsel for the respondents submitted that this dictum has set a legal precedent, thus binding the court in casu. Te commissioner, however, held that the statement in question was made obiter, because no reasoning was provided for it in the SCA judgment.
Te commissioner further confirmed that infringement proceedings may be instituted aſter the expiration of a patent and that a patent may be revoked aſter expiration. Tis would be effective as from the date of grant. It was also confirmed that a patentee may apply “at any time” for the amendment of a complete specification to protect the patent against a claim for revocation. Furthermore, section 51(9), provides that “...where any proceedings relating to an application for a patent or a patent are pending in any court, an application for the amendment of the relevant specification shall be made to that court, which may deal with such application for amendment as it thinks fit…”.
“ THE COMMISSIONER FURTHER CONFIRMED THAT INFRINGEMENT PROCEEDINGS MAY BE INSTITUTED AFTER THE EXPIRATION OF A PATENT AND THAT A PATENT MAY BE REVOKED AFTER EXPIRATION. THIS WOULD BE EFFECTIVE AS FROM THE DATE OF GRANT. IT WAS ALSO CONFIRMED THAT A PATENTEE MAY APPLY ‘AT ANY TIME’ FOR THE AMENDMENT OF A COMPLETE SPECIFICATION TO PROTECT THE PATENT AGAINST A CLAIM FOR REVOCATION.”
Te commissioner held that the word “any”, by implication, meant that amendment proceedings are not restricted to the term of the patent. He concluded that “aſter the term of a patent has expired, the patent does not cease to have legal force and effect”. Tis also negated the respondents’ contention that the applicant had no locus standi to bring the application for amendment. Te amendment was accordingly allowed and the respondents were ordered to pay the costs.
Te commissioner added that any damages awarded in the pending infringement proceedings would be subject to the provisions of section 66(5) of the act. He confirmed that the court will have discretion to consider the patentee’s conduct in framing the specification, as well as allowing the patent to remain in its unamended form for the full duration.
Te judgment is interesting in that the patentee succeeded in amending its patent aſter expiry, in order to meet a challenge against the validity of the patent. Tis clears the way for the patentee to proceed with its claim for damages during a period of alleged infringement prior to expiry of the patent.
Jaco Teunissen is an attorney in the patent department at DM Kisch Inc. He can be contacted at:
jacot@dmkisch.com
94 World Intellectual Property Review November/December 2010
www.worldipreview.com
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