IN THE COURT OF THE COMMISSIONER OF PATENTS /ES

(REPUBLIC OF SOUTH AFRICA)

DELETE WHICHEVER IS NOT APPLICABLE

(1) REPORTABLE: YES / Nflf? feS**^ (2) OF INTEREST TO OTHER JUDGES: / NO.

(3) REVISED.

DATE

1/

SIGNATURE

IN THE MATTER BETWEEN

UNIVERSITY OF PRETORIA

AND

THE REGISTRAR OF PATENTS

BONE S.A.

DUNEAS, NICOLAAS

CASE NO: ZA2004/2575 ZA2005/08679

DATE:

APPELLANT

1 M RESPONDENT

2 RESPONDENT/1 JOINT PATENTEE

JUDGMENT

PRINSLOO. J

2

[1] This is an appeal against the decision of the Registrar of Patents, first respondent

("the Registrar") taken on 19 April 2011, refusing two requests for the

rectification of the Register of Patents.

[2] The second and third respondents are two joint patentees of South African patent

2004/2575 entitled "a cross-linked collagenous biomaterial" ("the 2004 patent")

and South African patent 2005/08679 entitled "a cross-linked collagenous

biomaterial" ("the 2005 patent").

[3] The appellant sought and on appeal seeks an order in terms of section 52 of the

Patents Act 57 of 1978 ("the Act") for an order that the Register be rectified by

marking each of the two aforesaid patents as lapsed.

[4] According to the Register, the complete specification of the 2004 patent was

accepted on 17 November 2005 and a patent granted on 22 February 2006.

The filing and prosecution history of the 2004 patent

[5] The patent was granted on a National Phase entry in South Africa on form P25

dated 1 April 2004 of International Patent application PCT/IB02/03576 filed on

4 September 2002 and designating amongst others. South Africa.

[6] The prescribed national fee was paid on 1 April 2004.

On 1 April 2004, and on form P4, the second and third respondents made a first

application in terms of section 40 of the Act for an extension of time for the

acceptance of the complete specification of the patent until 1 October 2005.

namely for eighteen months.

On 27 October 2004, the Registrar sent a notice relating to outstanding documents

to the patent attorneys representing the second and third respondents. It appears

from the notice that a power of attorney and a deed of assignment were

outstanding.

The outstanding power of attorney and deed of assignment were filed on

27 October 2005. This was well after the expiry of the extension period, supra,

which came to an end on 1 October 2005.

On 27 October 2005, the second and third respondents made a second application

in terms of section 40 of the Act for an extension of time for the acceptance of the

complete specification of the patent, until 1 November 2005.

The complete specification of the patent was accepted on 17 November 2005,

some nineteen months and seventeen days after compliance with section 43E(1)

of the Act. This acceptance was published in the Patent Journal on 22 February

2006. which is more than three months after the date of the purported acceptance.

4

The reference to section 43E arises from the fact that the section deals with

international patent applications under the Patent Co-operation Treaty ("PCT"),

such as the patents now under discussion.

In terms of regulation 45, of the regulations promulgated in terms of the Act, ("the

regulations") an applicant may, subject to the provisions of section 40 of the Act,

request the Registrar to delay acceptance of the application to a date not later than

eighteen months from the date of the application.

In terms of the provisions of section 43F(3)(h) this period of eighteen months is

reduced to twelve months. This section and time period is applicable to the

present case because it was an international application designating South Africa

and, in compliance with section 43E of the Act, the prescribed national fee was

paid on 1 April 2004.

In earlier proceedings before the Registrar, leading up to this appeal, the appellant

contended that in terms of section 40, read with section 43F(3)(h) of the Act, and

in the absence of a proper application for an extension of time for the acceptance

of the complete specification, the complete specification of the application for the

patent ought to have been accepted by 1 April 2005, ie after expiry of the

prescribed period of twelve months. Thus, so it was initially argued, the

application for the patent lapsed on that date. This argument, for purposes of the

5

present appeal, was abandoned by the appellant, and not pursued any further

before me by Mr Preis, S C for the appellant.

Similarly, an earlier contention before the Registrar that the first application for an

extension of t ime did not comply with the provisions of the Act, in that an

extension of eighteen months was requested, which exceeded the statutory

permissible maximum period of twelve months, was also not proceeded with

before me.

The filing and prosecution history of the 2005 patent

[12] On 26 October 2005, a fresh application in terms of section 37(1) of the Act was

made for the 2005 patent.

[13] The second and third respondents, as joint patentees, requested the Registrar to

ante-date the fresh application to the date of filing of the parent application (the

2004 patent) namely 5 April 2004. The request was made in terms of section

37(1) of the Act.

[14] The fresh application for the 2005 patent was made after 1 October 2005 when, on

the argument of the appellant, the 2004 patent lapsed upon expiry of the first

extension period, supra.

6

[15] The 2005 patent was accepted on 17 May 2006 and granted and sealed on 26 July

2006.

[16] Moreover, and on the assumption that the patents had been properly granted, the

annual renewal fees in respect of both patents should have been paid on

4 September 2008, but remained unpaid. Thus, so it was argued by appellant's

counsel, the patents would in any event have lapsed on that date.

The second and third respondents applied to the Registrar for the restoration of the

patents and they were restored on 18 September 2009 and 6 November 2009

respectively.

[17] Before me. no argument was presented with regard to the "lapsing" of the patents

in September 2008.

Representations made to the Registrar and the outcome thereof

[18] The appellant contended that the purported acceptance and corresponding entry in

the Register with regard to the two patents were incorrect and should be rectified

in terms of section 52 of the Act. Letters were written to the Registrar, seeking

entries to be made in the Register to indicate that the two patents had lapsed and

suggesting that if the second and third respondents did not seek rectification of the

Register, it would be incumbent upon the Registrar to mero motu make an order

for such entries to be made in terms of section 52 of the Act. Corresponding

7

demands were addressed to the attorneys acting for the second and third

respondents who declined to comply with the demands.

[19] In September 2010, the appellant's attorneys sought rectification of the Register

by deleting the acceptance dates of the patents, as well as the date indicating the

grant of the 2004 patent, and seeking an entry against both patents indicating that

they had incurably lapsed.

[20] The written ruling of the Registrar, in response to these requests, which ruling is

now challenged before me on appeal, can be summarised as follows:

1. The extension of twelve months in terms of section 43F(3)(h) can

be extended further as provided in section 40 and it cannot be said

that it is a maximum allowable extension under the Act. If one

refers to Schedule 1, item 4(i), it can be seen that there is a

provision for payment of fees for extension of time of acceptance

beyond twenty one months. "Therefore the intention of the

legislature in my opinion is clearly to allow sufficient extension of

time as the Registrar may deem reasonable."

2. The second application for extension of time to prosecution is

granted by the Registrar in terms of section 16(2) and therefore is

not irregular. This is a reference to the extension granted from

27 October 2005 to 1 November 2005 (incorrectly referred to as

2006 by the Registrar). On 1 November 2005 the application was

8

ready for acceptance. The office issued the acceptance notice on

17 November due to operational constraints and not due to any

fault on the part of the second and third respondents. The delay of

acceptance from 1-17 November 2005 is sanctioned by the

provisions of section 40(c) and therefore not irregular. This ruling

about a permissible delay between 1 November and 17 November

in terms of the provisions of section 40(c) was not challenged by

Mr Preis in the proceedings before me. The main thrust of the

argument of Mr Preis is that the application already lapsed on

1 October 2005, when the extension period expired.

As to the second leg of the appellant's argument, namely that the

application also lapsed because the publication of the acceptance

was out of time, the Registrar ruled as follows:

"In order to have his Notice of Acceptance published in the

February Patent Journal, the applicant was required to

submit the notice to the Government Printing Works

("GPW") a month before the publication date, in casu, on

or before 22 January 2006, which date falls well within the

three months period in terms of section 42(3) of the Act

read with regulation 46 of the Patent Regulations. 1978.

To avoid the unnecessary hardship for the applicants to

request extension of time in terms of regulation 46 for

9

every few days when the publication date of the Patent

Journal falls outside of the three months period, the

Registrar in his office practice accepted the approach that

the applicant is in compliance with section 42(3) and

regulation 46 if the acceptance is advertised within three

consecutive publication of the Patent Journal immediately

after the acceptance date."

Alternatively, so the Registrar ruled,

"If the granted extension of time could be considered as

trivial procedural irregularities, it is prudent to say that in

granting the extension of time I was guided by the general

approach as reflected in Burrell: South African Patent Law

& Practice 2 n d edition at 82 and also followed in Bioclones

(Pty) Ltd v Kirin-Amgen Inc 1992 BP 229 (RP):

'The Registrar is mindful of the facts that the majority of

patents and patent applications emanate, or are attacked,

from abroad from whence the local practitioner must obtain

his instructions: that patent matters are invariably complex;

that there is no official examination in South Africa as to

the subject-matter and merits of inventions; and that it is

important in the public interest that disputes relating to

monopoly rights be fully aired and considered and not be

10

denied such consideration by procedural technicalities. In

the light of these factors, the approach of the Registrar

normally is to grant at least reasonable extensions of time

periods. Such a general approach is, it is submitted, a

commendable one.'"

4. The Registrar also pointed out that the current status of both

patents is recorded in the Register as "granted". She ruled that the

requested rectification, if allowed, would in fact amount to a

revocation. The grounds for revocation of a patent are specified in,

and limited by. the provisions of section 61(1) of the Act and

"trivial procedural irregularities" is not one of such grounds. The

Registrar then, in conclusion, stated:

"At last, but not least, the preservation of the status quo is

of a paramount interest of the joint patentees and should not

be jeopardised light-mindedly based merely on the alleged

procedural irregularities."

The grounds of appeal to be found in the notice of appeal

[21] What follows is a brief summary of those grounds:

1. The Registrar erred in finding that the application for the 2004

patent had not lapsed on 1 October 2005 in view of the following:

11

1.1 An extension had been granted by the Registrar until

1 October 2005 for the acceptance of the complete

specification of the 2004 patent.

1.2 On 1 October 2005 the application in respect of the 2004

patent had not yet complied with the requirements of the

Act and was therefore not yet in order for acceptance and

accordingly had lapsed on that date in terms of section 40

of the Act.

The Registrar erred in finding that the application for the 2004

patent had not lapsed on 17 February 2006, since:

2.1 the complete specification of the 2004 patent was

purportedly accepted by the Registrar on 17 November

2005;

2.2 the acceptance was first published in the Patent Journal on

22 February 2006;

2.3 accordingly the application for the 2004 patent had lapsed

on 17 February 2006 in terms of section 42(3) of the Act.

The Registrar erred in finding that the application for the 2005

patent was not in contravention of the provisions of section 37(1)

of the Act since:

3.1 the application for the 2005 patent was filed on 26 October

2005;

12

3.2 as indicated, the application for the 2004 patent had lapsed

on 1 October 2005;

3.3 accordingly, on 26 October 2005 when the application for

the 2005 patent was filed, the application for the 2004

patent had lapsed and the application for the 2005 patent

was in contravention of the provisions of section 37(1) of

the Act.

(At this point I record that, during the proceedings before me, I

was informed by Mr Preis and Mr Hoffman SC for the second and

third respondents, that the parties were in agreement that, for

purposes of this appeal, the fate of the 2005 patent would be linked

to the fate of the 2004 patent, so that the result of the appeal in

respect of the 2004 patent would also apply to the 2005 patent.

Consequently, I will not pay any further attention to this ground of

appeal involving the 2005 patent.)

The Registrar erred in relying on the judgment in Bioclones, supra,

because:

4.1 the Bioclones matter relates to extensions requested and

granted during post-grant litigation proceedings between

the two parties; and

4.2 the appellant's requests for rectification of the Register

relate to pre-grant irregularities during the prosecution of

the applications for the 2004 and 2005 patents.

13

5. The Registrar erred in finding that if the appellant's requests were

to be allowed, it would amount to an act of revocation, because:

5.1 as indicated, the application for the 2004 patent had lapsed

on 1 October 2005, alternatively 17 February 2006;

5.2 as indicated, the application for the 2005 patent was filed in

contravention of the provisions of section 37(1) of the Act

(this need no longer be determined);

5.3 the appellant's requests were for rectification of the

Register in order to reflect the de jure position.

Ground 5, dealing with the Registrar's finding that the requests for rectification, if

allowed, would amount to an act of revocation, did not receive any attention

during the proceedings before me, neither was it dealt with in the heads of

argument presented by second and third respondents' counsel. In my opinion,

there is no merit in this ruling of the Registrar. The rectification requested, has

nothing to do with revocation of a patent, in the spirit of the grounds for

revocation to be found in section 61 of the Act. The rectification sought by the

appellant has to do with the question as to whether or not the application for the

patents had lapsed. Consequently, I do not propose dealing with this particular

issue any further.

I turn to the grounds on which the appeal in respect of the 2004 patent is based.

14

[25] I have pointed out that in this case, the eighteen month period is reduced to twelve

months in view of the provisions of section 43E and section 43F. Despite this, the

Registrar saw fit to grant an extension for eighteen months until 1 October 2005.

The Registrar also did not. as far as I can make out. grant the extension over two

phases, the one for a maximum of three months and then another one as provided

for in section 40.

Did the application in respect of the 2004 patent lapse on 1 October 2005?

[24] Section 40 of the Act reads as follows:

"40. Lapsing of applications. - If a complete specification is not

accepted within eighteen months from the date of an application,

the application shall lapse unless-

(a) an appeal has been lodged in respect of the application;

(b) the time within which such appeal may be lodged has not

expired; or

(c) the delay in accepting the specification was not due to any

act or omission on the part of the applicant:

Provided that where an application is made for an extension of

time for the acceptance of a complete specification, the Registrar

shall, on payment of the prescribed fee, grant an extension of time

to the extent applied for, but not exceeding three months: Provided

further that the Registrar may, on good cause shown and on

payment of the prescribed fee. grant a further extension of time."

15

Nevertheless, as I have already recorded, counsel for the appellant did not rely on

these deviations from the peremptory provisions of section 40, and accepted, for

purposes of the appeal, that a proper extension was granted until 1 October 2005.

The main thrust of the appellant's argument is that the application lapsed, in the

spirit of section 40, on 1 October 2005. The section is couched in peremptory

language when it prescribes that the application "shall lapse".

It was not legally competent, so it was argued by Mr Preis, to grant a further

extension on 27 October (until 1 November) 2005 after the application had already

lapsed on 2 October 2005.

It was argued that it was not legally competent to "resurrect" the application in

this way because it had already lapsed.

I have already pointed out that the appellant also did not proceed with an

argument to the effect that, even if the later extension until 2 November 2005 had

been legally competent (which was disputed) the application in any event lapsed

after 2 November because it was only accepted on 17 November, without a

further extension having been granted between 2 and 17 November. This

argument was abandoned because of the Registrar's ruling, supra, that the further

delay was not due to any omission on the part of the second and third respondents,

in the spirit of section 40(c).

16

[27] For purposes of deciding this dispute, careful consideration must be given, in my

view, to the provisions of section 16(2) of the Act which read as follows:

"(2) Whenever by this Act any time is specified within which any act or

thing is to be done, the Registrar or the commissioner, as the case

may be, may, save where it is otherwise expressly provided, extend

the time either before or after its expiry." (Emphasis added.)

[28] In the case of Kaltenbach Thuring Societe Anonyme v Grande Paroisse Societe

2001 BIP 62 (CP) this court, per ROUX, J, heard an application to set aside an

order to found jurisdiction for the attachment of a patent which had lapsed before

the making of the order. It emerged that the payment of the renewal fee on the

patent within the six month grace period had not been made before the expiration

of the relevant year of the term of the patent. It also appeared that the payment

had been made by the agents for the respondent before the application had been

heard by the commissioner who had made the order to found jurisdiction.

[29] This case, of course, dealt with a lapsed patent and not with a lapsed application

as intended by section 40. The relevant provision is section 46(2) which reads as

follows:

"A patent shall lapse at the end of the period prescribed for the payment of

any prescribed renewal fee, if it is not paid within that period: Provided

that the Registrar may upon application and subject to the payment of such

17

additional fee as may be prescribed, extend the period for payment of any

such fee for a period not exceeding six months."

This is the six months grace period referred to above. The payment was made by

the creditors' (respondents') attorney in an effort to "resurrect" the lapsed patent so

that there was an asset capable of being attached.

In granting the application to set aside the attachment, and in considering the

provisions of section 16(2), the learned judge said the following on p64 of the

report:

"Apparently the Registrar accepted the payment and the patent lives on as

an attachable asset so it is claimed. The money was paid within six

months after 6 January 2001. (My note: it is not quite clear whether the

patent had lapsed on 6 January or 16 January 2001 but nothing turns on

this.) Reliance is then placed on section 16(2) of the Act. It reads as

follows:

'16(2) (I am not repeating the wording of 16(2).)'

Reliance on this general section of the Act is not justified as section 46(2)

contains an express provision. The Registrar has no power to ignore the

plain operation of the Act, namely non-payment results in lapsing. The

extension of time to pay renewal fees can only be made before the patent

lapses. It is obvious that the passing of money cannot resurrect a lapsed

patent. Only compliance with section 47 can achieve such a result."

18

Section 47 provides for a procedure whereby a lapsed patent can be restored.

I add that the learned judge also granted the application to set aside the attachment

for other reasons, which need not be considered for present purposes.

Understandably, counsel for the appellant, Mr Preis, relied on the comments of

the learned judge in Kahenbach. It was argued, if I understood Mr Preis

correctly, that, by parity of reasoning, if a lapsed patent cannot be resurrected by

the payment of the renewal fee after the patent had lapsed, a lapsed application

can also not be resurrected by granting of an extension after the application had

lapsed, given the peremptory language used in section 40.

It was argued that, as in Kahenbach, reliance on the general provision, which is

section 16(2), is not justified in the face of the express provisions contained in

section 40 with regard to the lapsing of the application and couched in peremptory

language.

In Weekly Property Trader v L S Erasmus & Another 2002 BIP 303 (T) an

application came before CLAASSEN, AJ (as he then was) to have an application

for the registration of a trade mark (property trader in class 16) marked in the

Register as having been abandoned.

19

The crucial question was whether the Registrar of Trade Marks was entitled, in

terms of section 45(3) of the Trade Marks Act 194 of 1933, to grant an extension

of time after the lapse of the period allowed for completing the application in

terms of section 20(2) of the Act.

Section 45(3) of the Trade Marks Act contains provisions similar to those of

section 16(2) of the Act:

"Whenever by this Act any time is specified within which any act is to be

performed or a thing is to be done by any person, the Registrar may, on

application by that person, and unless otherwise expressly provided,

extend the time either before or after its expiration."

On p306 of the report, the learned judge, in following and applying Kahenbach,

said the following:

"I agree with ROUX J that the discretion conferred upon a Registrar to

extend a time period cannot override a specific declaration of

abandonment if set out clearly in the Act. If that were not so, an

application like the applicant's could be extended indefinitely with no

certainty as to the end thereof or to other prospective applicants. And I

cannot find on reading of his judgment, that ROUX J was wrong.

Therefore the Registrar was not entitled to grant an extension of time of an

application which had been deemed to have been abandoned."

20

The case of Gateway Communications (Pty) Ltd v Gateway Data

Communications & Another 2005 BIP 186 (T) involves an application for a

declaration that the entry of the registration of the trade mark Gateway Data

Communications GDC had been wrongly made, and there was also an application

for an order directing the Registrar of Trade Marks to mark the trade mark entry

as abandoned. The matter came before HARTZKNBERG. ADJP.

It was held that in terms of the provisions of section 25(1) of the Repealed Trade

Marks Act 62 of 1963 the first respondent's application was deemed to have been

abandoned by virtue of the applicant not having taken any "action" as provided

for in section 25(2) of that Act within the period prescribed by the Registrar in a

notice.

It was held that the applicant could not rely on the provisions of section 55(3) of

the Repealed Act because that very section provides that extensions can be

granted "unless otherwise expressly provided". In terms of the maxim generalia

specialihus non deroganl general provisions in legislation do not override special

provisions. According to Hiemstra and Gonin Trilingual Legal Dictionary, 2 n d ed

at p202 this maxim means "algemene voorskrifte doen niks af aan besondere

bepalings nie/general words (rules) do not derogate from special". It was held by

the learned judge that the provision in section 25(2) of the Repealed Act that the

application shall be deemed to have been abandoned is a special provision. On the

21

argument of Mr Preis, supra, the same must no doubt apply to the provisions of

section 40 stipulating, in peremptory language, that an application shall lapse.

Section 55(3) of the Repealed Act contained provisions similar to those of section

16(2) of the Act:

"(3) Whenever by this Act any time is specified within which any act or

thing is to be done, the Registrar may, unless otherwise expressly

provided, extend the time either before or after its expiration."

HARTZENBERG ADJP specifically considered the judgments of ROUX J and

CLAASSEN AJ (as he then was) in Kaltenbach and Weekly Property Trader and

adopted the reasoning of those learned judges.

Mr Hoffman, in his comprehensive address, invited my attention to the case of

University of Pretoria, Adams & Adams and South African Institute of Intellectual

Property Law v Registrar of Patents 2002 BIP 68 (T) which came before a full

court of this division, VAN DER WALT J presiding.

It was an application for declaratory relief. Declarators sought were, inter alia,

that ROUX J, in Kaltenbach, was wrong in his judgment, and particularly in his

interpretation of section 46(2) of the Act. There was also a declaration sought as

to the proper construction to be placed on section 46(2) of the Act and a third

declaration sought was to the effect that the payment of a renewal fee on a certain

22

patent in the time period between the due date of payment and the six month

period referred to in section 46(2) had been correctly accepted by the Registrar.

[44] On p73 of the report, when considering the observation by ROUX J that "The

extension of time to pay a renewal fee can only be made before the patent lapses.

It is obvious that the passing of money cannot resurrect a lapsed patent.", the

learned presiding judge said the following:

"Whether this is a correct interpretation of the Act is in my view on this

aspect of the judgment immaterial. However, in the context of the facts

before the learned commissioner, this statement can only be an obiter

expression of his view which is not binding. The ratio and real reason for

the setting aside of the attachment order was that the patent had lapsed

because that was the intention of its proprietor."

The declarator that ROUX J was wrong was not granted.

[45] It was held, on p77, that, on a proper interpretation of the Act, the interpretation to

be attached to section 46(2) is that a patent does not lapse if a patentee applies

annually for the renewal of that patent during the prescribed period, that is before

its third anniversary date and the six months immediately following thereon,

provided the prescribed renewal and extension fees are paid.

[46] The impact of section 16(2) (or lack thereof) was not considered at all.

23

It may be arguable that the finding of ROUX J is at odds with the interpretation

attached to section 46(2) by the full court which held that the patent does not lapse

if the application for renewal and the payment of the fee take place within the

grace period of six months. On the other hand, this interpretation seems to be

aimed, largely, at establishing when the patent lapses where ROUX J only said

that the extension of time to pay the fees can only be made before the patent

lapses. On this basis, the two findings may even be in harmony with one another.

In any event, the full court declined to find that ROUX J was wrong.

As a final observation on this issue, it can perhaps be noted that the interpretation

attached by the full court to section 46(2), is not "an open-ended" one, in the sense

that it requires the payment and the application to occur within the six month

grace period.

In the case of section 40. which should be considered on its own, there is no grace

period. As stated in the notice of appeal, supra, by 1 October 2005 (when the

extension period expired) the application for the 2004 patent had not yet complied

with the requirements of the Act and was therefore not yet in order for acceptance

so that it had lapsed on that date in terms of section 40 in the absence of a further

application for extension. Section 40 provides that such an extension can only be

granted "on good cause shown and on payment of the prescribed fee". By

1 October 2005, there was no application for an extension at all. let alone "good

24

cause shown" or a prescribed fee paid. This is clearly an express or special

provision which brings the matter inside the ambit of the proviso to be found in

section 16(2). It is also noteworthy, in my view, that section 16(2), as a general

provision, contains no requirement that "good cause" must be shown before the

Registrar or the commissioner can exercise the general discretion to extend a time

period. Even section 46(2), for that matter, contains no requirement for good

cause to be shown.

Finally, where the full court held that the remarks of ROUX J were made obiter.

the same, most certainly, cannot be said about the findings of CLAASSEN AJ and

HARTZENBERG ADJP. I find myself in respectful agreement with those

findings, with the result that I have come to the conclusion that the 2004 patent

application lapsed on 1 October 2005 so that the appeal in that regard ought to be

upheld.

I have to add that Mr Hoffman argued that CLAASSEN AJ erred, firstly because

he failed to appreciate that the dictum of ROUX J was obiter, and secondly

because he failed to appreciate the distinction between the words "lapsed" and

"abandoned". By reference to the appropriate Oxford English Dictionary

definition, Mr Hoffman argued that "abandon" has a far more permanent

connotation than "lapse". Mr Hoffman also argued that HARTZENBERG ADJP

had erred in the same respects as CLAASSEN AJ.

25

[53] Section 42(3) reads:

I find it difficult to appreciate the relevance of the argument that the difference

between "lapse" and "abandon" is central to a decision of the dispute before me.

In any event, the one Oxford Dictionary definition of "lapse" presented to me by

Mr Hoffman reads as follows: "Law. The termination of a right or privilege

through neglect to exercise it within the limited time, or through failure of some

contingency." "Terminate" according to the Oxford Dictionary I consulted, means

"bring to an end" or "bring or come to an end". According to the Bilingual

Dictionary of Bosnian, Van der Merwe and Hiemstra "terminate", in Afrikaans,

means "eindig, ophou, verstryk". "Termination" means "einde; grens;

beeindiging, afloop". To me, there is a clear element of permanence about all

these definitions. I fail to see how it can be argued that "abandon" has a "far more

permanent connotation" than "lapse" in view of the definitions quoted above.

[51] In the result, I consider myself bound by the other judgments referred to, with

which I am in respectful agreement.

Did the application in respect of the 2004 patent also lapse because the publication was

out of time?

[52] Section 42 deals with "notice and publication of acceptance of complete

specification..."

2 6

(3) Unless the acceptance 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 g-good cause shown and on

payment of the prescribed fee, allow, the application shall lapse.

[54] Regulation 46 provides as follows:

"Publication of acceptance. - 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 P4."

[55] It is common cause that the date of acceptance was 17 November 2005 so that the

publication had to take place by 17 February 2006. It is common cause that this

did not happen, and that publication only took place on 22 February 2006.

[56] Both section 42(3) and regulation 46 are couched in peremptory language.

[57] It was common cause before me that there was no application for an extension as

provided for in section 42(3), let alone "good cause shown" or "payment of the

prescribed fee".

[58] I was also referred to regulation 99 which provides:

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"Time limits. - Time limits specified may be extended by consent of the

parties or, failing such consent, by the Registrar on a request made to

him." (Emphasis added.)

In this case, it is common cause that no request was made to the Registrar.

I have quoted, supra, what the Registrar had to say about this subject in her ruling

which is now being challenged on appeal. I do not propose repeating the

quotation. She declared that the required notice had to be submitted to the

Government Printing Works by 22 January 2006. She spoke about three

consecutive publications. I see no provisions to this effect in section 42 or the

regulations. She appears to say that "to avoid unnecessary hardship" a certain

office practice had been adopted by herself "that the applicant is in compliance

with section 42(3) and regulation 46 if the acceptance is advertised within three

consecutive publication of the Patent Journal immediately after the acceptance

date." There was, in any event, no evidence before me that there were "three

consecutive publications".

I see no basis for a finding that the Registrar is vested with the power to by-pass

or ignore the peremptory requirements of section 42(3), firstly, that there must be

an application to her for an extension, secondly that good cause for such an

extension must be shown and thirdly that payment of a prescribed fee must be

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[60] As to the Registrar's reference to "trivial procedural irregularities" and her

reliance on the Bioclones case, supra, I consider that this argument is ill-founded.

As recorded in the notice of appeal, the Bioclones matter relates to extensions

requested and granted during post-grant litigation proceedings between two

parties. The appellant's requests for rectification relate to pre-grant irregularities

during the prosecution of the applications in respect of the 2004 and 2005 patents.

[61] In the result, I have come to the conclusion that the application in respect of the

2004 patent also lapsed for lack of compliance with the peremptory requirements

of section 42(3) of the Act, so that the appeal ought also to succeed on this

ground.

The order

[62] I make the following order:

1. The appeal is upheld.

2. The decision and/or ruling by the Registrar of Patents, dated 19 April

2011, is set aside and substituted with an order that the Register of Patents

be rectified by:

(a) in the case of South African patent 2004/2575:

(i) deleting the date in the block headed "Acceptance Date";

made. None of these requirements were met. Under these circumstances, as I

understand section 42(3), the application "shall lapse".

2 9

(ii) deleting the date in the block headed "Granted Date"; and

(iii) making an entry against South African patent 2004/2575

clearly indicating that it has incurably lapsed.

(b) In the case of South African patent 2005/08679:

(i) deleting the date in the block headed "Acceptance Date";

and

(ii) making an entry against South African patent 2005/08679

clearly indicating that it has incurably lapsed.

3. The second and third respondents, jointly and severally, are ordered to pay

the costs of the appeal, which will include the costs flowing from the

employment of senior counsel.

W R C PRINSLOO COMMISSIONER OF PATENTS

ZA2004-2575

HEARD ON: 3 OCTOBER 2011 FOR THE APPELLANT: D A PREIS, SC INSTRUCTED BY: D M KISCH INC FOR THE 2 n d & 3 R D RESPONDENTS: G I HOFFMAN SC INSTRUCTED BY: GALGUT & GALGUT