Patents Amendment Act

1 Words in bold type in square brackets indicate omissions from existing enactments. Words underlined with a solid line indicate insertions existing enactments. in (English text signed by the President.) (Assented to 30 December 2002.) ACT To amend the Patents Act, 1978, so as to bring certain provisions in line with the Agreement on Trade-related Aspects provisions regarding the processing and amendment Patent Co-operation Treaty in line with other applications; to corrections to some provisions and clarify others; to provide for the non- infringement of a patent under certain circumstances; and to provide for matters incidental thereto. of Intellectual Property Rights; to bring of applications under the effect technical B E IT ENACTED by the Parliament follows:- of the Republic of South Africa. as Amendment of section 32 of Act 57 of 1978, as amended by section 2 of Act 44 of 1986

1. Section 32 of the Patents Act, 1978 (hereinafter referred to as the principal Act). is 5 hereby amended by the substitution for subsection (3) of the following subsection: “(3) A complete specification shall- have an abstract as prescribed; necessary, illustrate or [fully] sufficiently describe, ascertain and, where exemplify the invention and the manner in which it is to be performed in order to enable the invention to be performed by a person skilled in the art of such invention; and disclose the best method applicant at the time when the specification and] end with a claim or claims defining claimed.”. of performing the invention known to the the invention for which protection is is lodged at the patent office; 10 15 Amendment of section 33 of Act 57 of 1978

2. Section 33 of the principal Act is hereby amended by the substitution for subsection ( 2 ) of the following subsection: “ ( 2 ) Where priority is claimed in an application in terms of section 3 1 ( 1 ) from one or more prior applications, or one or more prior applications in a convention country or countries, or both, and the invention claimed in the application is fairly based on matter disclosed in one or more of [the] any such prior applications. the priority date of the invention shall be the date of lodging of the earliest of [the] such prior applications in which that matter was disclosed in so far as it is fairly based on such earliest application.” 20 25 i 4 No. 24253 GOVERNMENT GAZETTE. IS JANUARY 1003 Act No. 58,2002 PATENTS AMENDMENT ACT, 2002 Substitution of section 43A of Act 57 of 1978

3. The following section is hereby substituted for section 43A of the principal Act: “Interpretation

43A. In this Chapter, unless the context otherwise indicates- any word or expression defined in the Patent Co-operation Treaty shall have the same meaning as in that Treaty& _____ (b) “national phase of international application” means an application for a patent in the Republic contemplated in section 43B, in respect of which the applicant has complied with section 43E.”. Amendment of section 43D of Act 57 of 1978

4. The following section is hereby substituted for section 43D of the principal Act: 5 10 “National processing

43D. The patent office as designated Office or elected Office shall not commence processing of the national phase of an international application designating or electing referred to in section 43E( 1) except where the applicant complies with that section and lodges with the patent office a written request for early commencement of such processing.”. the Republic before the expiration of the period 15 Amendment of section 43E of Act 57 of 1978

5. Section 43E of the principal Act is hereby amended- 20 ( a ) by the substitution for paragraph ( 6 ) of subsection (1) of the following paragraph: “(6) if the international application has not been lodged or published in terms of the Patent Co-operation Treaty in English. lodge at the patent office within the prescribed period a translation of the 25 international application, containing the prescribed contents, in an official language of the Republic.”; (b) by the substitution for subsection (2) of the following subsection: “ ( 2 ) If the applicant does not comply with subsection (1) within the period referred to in that subsection [or the further period that the 30 registrar allows], the international application concerned. insofar as the Republic is designated or elected, shall be deemed to have been abandoned for the purposes of this Act.”; and (c) by the addition of the following subsection: “(3) The registrar may upon application made either before or after the 35 expiry of the further period contemplated in subsection ( l ) , extend the period for a further period not exceeding three months.”. Amendment of section 43F of Act 57 of 1978

6. The following section is hereby substituted for section 43F of the principal Act: “Administration provisions 43F. (1) When processing the national phase of an international application, the patent office shall, subject to subsections ( 2 ) , [and] (3) - (4). apply the Patent Co-operation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations, and the other of this Act. ( 2 ) When processing the national phase of an international application, the Patent Co-operation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations shall prevail in the event of any conflict with this Act. 40 45 6 No. 23253 GAZETTE. GOVERNMENT

15 JANUAR)' 200.7 Act No. 58.2002 PATENTS AMENDMENT ACT. 2002 (3) When processing the national phase of an international application designating the Republic- ( a ) (i) section 9(b) shall not apply: and (ii) the applicant shall be represented by an agent who shall be appointed within the prescribed time; (bl section 10 shall apply only and the applicant who [43E(l)l for the purposes of section 10, be deemed to be the applicant in respect of the national phase of the international application; if the applicant complies with section so complies shall, (c) section 16(2) shall apply in relation to time limits specified in terms of the Patent Cooperation Treaty, the regulations made thereunder and the administrative instructions issued under those regulations unless otherwise provided therein; (dl (i) section 30(1). ( 5 ) and (6) [and (7)] shall not apply; [and 5 10 (ii) the internationalapplication shall date from, and the date of 15 (e) (i) application of the international international filing date accorded in terms Co-operation Treaty;] to the description. claims, drawings (if any) and abstract referred in Article 3(2) of the Patent Co-operation Treaty shall be deemed to be a complete specification; and application shall be, the of the Patent cf) not apply; (ii) section 32(5) shall if- (i) the international application is a convention application; (ii) the applicant has complied with Rule 17.1 of the regulations 20 25 made under the Patent Co-operation Treaty; and (iii) the priority document referred to in the said Rule 17.1 is a prescribed document for the purposes of section 35(2). the applicant shall be deemed to have furnished a copy of the priority document within the prescribed period referred to in section 35(2); 30 IfA) if the first-mentioned application contemplated in section 37 is the national phase of an international application, the date on which that application was lodged at the patent office shall be the international filing date accorded in terms of the Patent Co-operation Treaty; section 38 shall not apply; [for the purposes of section 40,] the period of 18 months from the date of the application shall, for the purposes of section 40. be a period of 12 months from the date on which the applicant complies with section [43E(l)] 43E; section 43(3) shallnot apply but, when the applicant has complied with section [43E(l)] 43E and the international application has been published in terms of Article 21 of the Patent Co-operation Treaty. the national phase of the international application shall be open to public inspection as provided in section 43( 1); section 43(4) shall not apply; IjA) the date of application-of the national phase of the international application shall, for the purposes of section 46 be the international filing date accorded in terms of the Patent Co-operation Treaty: ( k ) any correction or rectification of any document made in terms of the Treaty shall be in terms of section 50; if an application for amendment of the international application is made before [the acceptance of the international application] publication in terms of section 42. advertised as the application for amendment shall contemplated in section 51(2); regulations made under the Patent Co-operation deemed to be a correction or amendment made (i) of the national phase not be (1) (ii) [if- (ua) the applicant has not elected the Republic for the purposes of an international preliminary examination under Chapter I1 of the Patent Co-operation Treaty before the expiration of 19 months from the priority 35 40 45 50 55 60 8 No. 24253 GAZETTE. GOVERNMENT 15 JANUARY 2003 Act No. 58,2002 PATENTS AMENDMENT ACT. 2002 (bb) date as defined in Article 2(xi) of that Treaty and the applicant has complied with section 43E(1), any amend- ment made in terms of Article 19 of that Treaty; and the applicant has elected the Republic for the purposes of an international preliminary examination under Chapter I1 of that Treaty before the expiration months from the priority date as defined in Article 2(xi) of the Patent Co-operation Treaty and the applicant has complied with section 43E(1), any amendment annexed to the international preliminary examination report, of 19 5 10 shall be deemed to have been made in terms may be set aside in terms of subsection (10) thereof.] of section 51 but (m) any amendment made in terms of- (i) Article 19 of the Patent Co-operation Treaty and which does not go beyond the disclosure in the international application as filed: or (ii) Article 34 of the Patent Co-operation Treaty and which is annexed to the international preliminary examination report. shall be deemed to have been allowed in terms of section 5 1 but may be set aside in terms of subsection (10) of that section if the amendment does not comply with subsection (6) or (7) thereof. (4) Save as provided for in this Chapter. the provisions relating to an application for a patent accompanied by a complete specification shall mutatis nzurundis apply to the national phase of an international application, and to any patent granted thereon.”. 15 20 75 Amendment of section 45 of Act 57 of 1978, as amended by section 40 of Act 38 of 1997

7. Section 45 of the principal Act is hereby amended by the substitution for subsection ( 2 ) of the following subsection: “ ( 2 ) The [sale] disposal of a patented article by or on behalf of a patentee or his 30 licensee shall, subject to other patent rights, give the purchaser the right to use, offer to dispose of and dispose of that article.”. Amendment of section 48 of Act 57 of 1978

8. Section 48 of the principal Act is hereby amended- (a) by the substitution in subsection (1) for paragraph (b) of the following 35 paragraph: “ ( b ) used, offered to dispose of or disposed of any article made or imported in the period referred to in paragraph (a): or”; (b) by the substitution in subsection (1) for subparagraph (ii) of paragraph (c) of the following subparagraph: 40 “(c) (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):” and ( c ) by the substitution for subsection ( 2 ) of the following subsection: “(2) Where a patent has been restored under section 47, any person 45 who, during the period referred to in subsection (l)(a), has expended any money, time or labour with a view to making, using, exercising [or]: offering to dispose of. disposing of or importing the invention, may apply in the prescribed manner compensation in respect of the money, time and labour so expended.”. to the commissioner for 50 inventions.”. relevant the . . 10 No. 24253 GOVERh’MEhT GAZETTE. 15 JANUARY 2003 Act No. 58,2002 PATENTS AMENDMENT ACT. 2001 Amendment of section 49 of Act 57 of 1978, as amended by section 42 of Act 38 of 1997

9. Section 49 of the principal Act is hereby amended by the substitution in subsection ( 2 ) for paragraph ( a ) of the following paragraph: ‘ ‘ ( a ) to make, use, exercise [or], offer to dispose of, dispose patented invention;”. of or import the 5 Amendment of section 57 of Act 57 of 1978

10. Section 57 of the principal Act is hereby amended by the substitution for subsection (1) of the following subsection: “( 1 ) Any contract, in so far as it relates to a licence under a patent to make, use, 10 exercise [or], offer to dispose of, dispose of or import a patented invention, shall terminate on the date on which the patent under which the licence was granted expires, is revoked or otherwise ceases to invention: Provided that where the contract relates to licences under more than one patent, such part of the contract as relates to any particular licence shall terminate when the patent under which it was granted expires, to protect the invention concerned, and that the contract as a whole shall terminate when all the patents under which all such licences were granted and which were in force at the time when the contract became operative, expire, are revoked protect is revoked or otherwise ceases protect such or otherwise cease to Amendment of section 58 of Act 57 of 1978

11. Section 58 of the principal Act is hereby amended by the substitution for paragraphs (a) and (b of the following paragraphs: “ ( a ) a licence to make a patented article shall carry with it the right to use or offer dispose to of or dispose of the patented and article; (b) a licence to use or exercise a patented process shall carry with it the right to make, use or offer to dispose of or dispose of the product of the process.”. Amendment of section 61 of Act 57 of 1978

12. Section 61 of the principal Act is hereby amended by the substitution in subsection ( 1 ) for paragraph ( e ) of the paragraph: following “(e) that the complete specification concerned does not sufficiently describe, ascertain and, where necessary, illustrate or exemplify the invention and the manner in which it is to be performed in order to enable the invention to be carried out by a person skilled in the art of such invention;”. 15 20 25 30 Amendment of section 65 of Act 57 of 1978, as amended by section 3 of Act 76 of 35 1988 and section 46 of Act 38 of 1997

13. Section 65 of the principal Act is hereby amended by the substitution for subsection (1) of the following subsection: “(1) Subject to the provisions of section 53(3), proceedings for infringement of a patent may be instituted by the patentee [or an exclusive licensee mentioned in 40 section 56(11)].”. Amendment of section 66 of Act 57 of 1978

14. Section 66 of the principal Act is hereby amended by the substitution for subsection ( 3 ) of the following subsection: “(3) Any person who, having made a request referred to in subsection (21, 45 expends during the period referred to in that subsection any money, time or labour with a view to making, using, exercising [or], offering to dispose of, disposing of or importing the invention, may apply in the manner prescribed to the 12 No. 24253 GOVERNMENT GAZETTE. 15 JANUARY 2003 Act No. 58,2002 PATENTS AMENDMENT ACT, 2002 commissioner for compensation in respect of the money, time or labour reasonably SO expended, and the commissioner may issue such order as he or she may deem fit.” Amendment of section 69 of Act 57 of 1978

15. Section 69 of the principal Act is hereby amended by the substitution for 5 subsection (1) of the following subsection: “( 1) A declaration that the use by any person of any process, or the making or use or [sale] offer to dispose or disposal or importation of any article by any person [of any article], does not or would not constitute an infringement of a patent, may be made by the commissioner in proceedings between that person and the patentee an exclusive licensee mentioned assertion to the contrary has proved- ( a ) that such person has applied in section 56(11)], notwithstanding that no is been made by the patentee [or licensee], if it written acknowledgement to the furnished [him] the patentee with full particulars of the process or article in question; and in writing to the patentee [or licensee] for a effect of the declaration claimed, and has [or 10 15 (b) that the patentee [or licensee] has failed to give such an acknowledgement.” Insertion of section 69A in Act 57 of 1978

16. The following section is hereby inserted in the principal Act after section 69: 20 “Acts of non-infringement 69A. (1) It shall not be an act of infringement of a patent to make. use, exercise, offer to dispose of, dispose of or import the patented invention on a non-commercial scale and solely for the purposes reasonably related to the obtaining, development and submission of information required under any law that regulates the manufacture, production, distribution, use or sale of any product. 25 (2) It shall not be permitted to possess the patented invention made. used, imported or acquired in terms of subsection (1) for any purpose other than for the obtaining, development or submission of information as contem- plated in that subsection.”. I 30 Short title

17. This Act is called the Patents Amendment Act, 2002.