SOUTH AFRICA
SOUTH AFRICA
peremptory in providing that an application “shall lapse”, and that such absolute wording did not allow for extensions or other remedial steps after the fact.
THE MAIN GROUND OF APPEAL WAS THAT THE APPLICATION FOR THE 2004 PATENT HAD LAPSED ON OCTOBER 1, 2005, BECAUSE THE APPLICATION WAS NOT READY FOR ACCEPTANCE ON THAT DATE.
With reference to the decisions in Kaltenbach Thuring Société Anonyme v Grand Paroisse Société, Weekly Property Trade v LS Erasmus and Another and Gateway Communications (Pty) Ltd v Gateway Data Communications and Another, it was ruled that in view of the peremptory language of section 40, the general discretion provided to the registrar in section 16(2) did not apply.
An additional ground of appeal was that the application had lapsed, because the publication of the acceptance in the Patent Journal was out of time. The commissioner confirmed that the provisions of section 42(3) and regulation 46 were also couched in peremptory language.
The commissioner therefore concluded that the prosecution of the 2004 patent was not in compliance with the provisions of section 40, as well as the provisions of section 42(3) and regulation 46.
The patent applicants had earlier conceded that the 2005 patent would be subjected to the same fate as the 2004 patent, and accordingly no arguments were heard in respect thereof.
being that the registrar had adopted a practice of accepting that an applicant had sufficiently complied with section 42(3) and regulation 46, if the acceptance had been advertised within three consecutive publications of the Patent Journal after the acceptance date.
The registrar’s final reason for refusing the appellant’s requests was that the status of the patents was indicated in the register as “granted”, and that the requested rectification would amount to revocation of the patents. The registrar contended that such “revocation” on the ground of “trivial procedural irregularities” was not recognised as a ground for revocation in terms of section 61 of the act.
Appeal to the Commissioner of Patents
The appellant accordingly appealed to the Court of the Commissioner of Patents. The main ground of appeal was that the application for the 2004 patent had lapsed on October 1, 2005, because the application was not ready for acceptance on that date. The appellant contended that the further request for an extension of time on October 27, 2005, was out of time and therefore not proper. In this regard the appellant contended, and the commissioner confirmed, that section 40 was
218 World Intellectual Property Review e-Digest 2012
Jaco Theunissen joined DM Kisch in 2008 after obtaining a BSc in medical sciences and an LLB from the University of Pretoria. He was admitted as an attorney in 2009, and appointed as an associate during 2011. Theunissen specialises in patents, litigation and agreements in the life sciences field, and in registered designs.
Conclusion
The commissioner set aside the earlier ruling of the registrar, and ordered the registrar to rectify the register, by deleting the acceptance date of both patents and the granted date of the 2004 patent, and to indicate that both these patents had incurably lapsed. The patent applicants were also ordered to pay the appellant’s costs.
Jaco Theunissen is a patent associate at DM Kisch. He can be contacted at:
jacot@dmkisch.com
www.worldipreview.com
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