University of Pretoria v Registrar of Patents and Others (ZA2004/2575, ZA2005/08679) [2011] ZACCP 3; 2011 BIP 41 (CP) (25 October 2011)

REPORTABLE

IN THE COURT OF THE COMMISSIONER OF PATENTS /ES

(REPUBLIC OF SOUTH AFRICA)

CASE NO: ZA2004/2575

ZA2005/08679

DATE:25/10/2011

IN THE MATTER BETWEEN

UNIVERSITY OF PRETORIA.................................................................................APPELLANT

AND

THE REGISTRAR OF PATENTS................................................................1ST RESPONDENT

BONE S.A.............................................................2ND RESPONDENT/1 st JOINT PATENTEE

DUNEAS, NICOLAAS.......................................... 3rd RESPONDENT/2ND JOINT PATENTEE

JUDGMENT

PRINSLOO. J

[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.

[7] 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.

[8] 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.

[9] 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.

[10] 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.

[11] 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.

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 present appeal, was abandoned by the appellant, and not pursued any further before me by Mr Preis, SC for the appellant.

Similarly, an earlier contention before the Registrar that the first application for an extension of time 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.

[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 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 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. 3. 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 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 2nd 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 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:

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 Oct ober 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.

2. The Registrar erred in finding that the application for the 2004patent 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.

3. The Registrar erred in finding that the application for the 2005patent 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;

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.) 4. 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.

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.

[22] 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.

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

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."

[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.

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).

[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 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.

[30] 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."

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

[31] 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.

[32] 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.

[33] 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.

[34] 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.

[35] 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."

[36] 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."

[37] 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.

[38] 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.

[39] 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 derogant general provisions in legislation do not override special provisions. According to Hiemstra and Gonin Trilingual Legal

Dictionary, 2nd 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 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.

[40] 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."

[41] HARTZENBERG ADJP specifically considered the judgments of ROUX J and CLAASSEN AJ (as he then was) in Kahenbach and Weekly Property Trader and adopted the reasoning of those learned judges.

[42] 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.

[43] It was an application for declaratory relief. Declarators sought were, inter alia, that ROUX J, in Kahenbach, 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 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.

[47] 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.

[48] 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 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.

[49] 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.

[50] 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.

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..."

[53] Section 42(3) reads:

"(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 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:

"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".

[59] 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 made. None of these requirements were met. Under these circumstances, as I understand section 42(3), the application "shall lapse".

[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";

(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 2nd & 3RD RESPONDENTS: G I HOFFMAN SC

INSTRUCTED BY: GALGUT & GALGUT