Introduction

South Africa has an abundance of natural resources and, as a result, a large proportion of patent applications are filed covering a process or apparatus used in the production of a product. In terms of patent law, there is no substantive difference between the patentability requirements for a patent for a product or a patent for a process. However, there are important differences between product and process patents when it comes to enforcement.

Patents Act

Corresponding to Article 64(2) of the European Patent Convention, Section 61(1) of the Patents Act provides that:

"a claim in respect of a patent for a process or an apparatus for producing any product shall be construed as extending to such product when produced by the process or apparatus claimed."

Although this section has not yet been interpreted by a court, it is expected that, in keeping with tradition in patent matters, a court faced with the task of interpreting Section 61(1) would most likely refer to and be instructed by decisions reached on a similar matter in either the United Kingdom or Europe; South African patent law being similarly aligned to European patent law.

In view of this protection being afforded to a product of a patented process, it has become local practice to not include a claim directed to a product of such a process, and it has even been said that:

"the insertion in a specification of a claim to a product of a process or of an apparatus claimed would… be redundant and, indeed, reflect poor practice on the part of the specification draftsman."

There is certainly merit in this statement. However, should a very specific instance arise, a patentee may be thankful for such "poor practice on the part of the specification draftsman".

Patent restoration

This update explores the restoration of a patent which has lapsed due to the non-payment of renewal fees – in terms of the Patents Act, annual maintenance fees are to be paid. A patentee is, as of right, afforded an extension period of six months to make payment of any outstanding maintenance fees, barring which, the patent will lapse. Should the patentee omit to pay within the six-month grace period, the patentee would need to bring an application for the restoration of the lapsed patent before the registrar of the Court of the Commissioner of Patents. The registrar will then advertise the application – thereby affording third parties a two-month period to lodge an objection to the restoration of the patent – if the registrar is satisfied that:

  • the omission to pay the renewal fee was unintentional; and
  • no undue delay occurred in making the application for restoration.

If there is no opposition to the restoration, the registrar may issue an order restoring the patent.

Section 48(1) of the Patents Act continues to provide that a patentee of a restored patent is not entitled to institute any proceedings against or recover any damages from any person who:

  • infringed the patent after the lapse of a period of six months from the date on which the renewal fee was due and before the date on which the application for the restoration of the patent was advertised; or
  • used, offered to dispose of or disposed of any article made or imported in the period referred to in Paragraph A; or
    • during the period referred to in Paragraph A commenced using or exercising the invention to which the patent relates and who thereafter continues to use or exercise the invention; or
    • 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.

Comment

On reading Section 48(1), it is immediately apparent that Paragraphs A and B pertain to patents directed towards a product, whereas Paragraph C is relevant to patents directed towards a process.

Further, it is noted that there is a significant difference between the rights afforded to a patentee of a restored patent in these provisions. A patentee of a restored patent directed towards a product may, in terms of Subsections A and B, launch proceedings against a person referred to therein to stop the continued infringement of the patent after the patent has been restored.

In contrast, as per Paragraph C, a patentee of a restored patent directed towards a process may not, even after the patent in issue has been restored, bring any proceedings to stop a person referred to therein from continuing with the infringement of the process to which the patent is directed (under Paragraph C(I)), or from using, offering to dispose of or disposing of a product obtained by the said process (under Paragraph C(II).

In view of the above and the fact that no excess claim fees are payable in South Africa, it would be good practice to include – should the subject matter of the specification allow for this – a product or product-by-process claim in a patent specification, thereby guarding against the consequences of Section 48(1)(C) of the Patents Act.

For further information please contact Pieter Lombard at KISCH IP by telephone (+27 11 324 3000) or email (pieterl@kisch-ip.com). The KISCH IP website can be accessed at www.kisch-ip.com.

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