The recent case of Gallagher Group Ltd v IO Tech Manufacturing (5 August 2013, unreported) may well be one of the most important patent cases in recent times impacting on South African patent validity. Some background to the case is important. South African patent law requires that an applicant for a patent completes a Form P3 declaration in which the patent applicant declares:
that the inventors of the invention are the persons named as inventors and the applicant has acquired the right to apply for the patent by virtue of a valid transfer of rights from the inventors;
that to the best of the applicant’s knowledge and belief, if a patent is granted on the application, there will be no lawful ground for the revocation of the patent; and
if the application is a convention application, that the earliest application from which priority is claimed is the first application in a convention country in respect of the invention claimed.
The content of this declaration should receive careful consideration, as it is a ground for revocation of a patent in terms of Section 61(1) (g) of the South African Patents Act, should this declaration contain a false statement or representation which is material and which the patentee knew or ought reasonably to have known to be false at the time when the declaration was made.
In the Gallagher case the court considered the question of whether or not it is possible to subsequently amend a patent application to rectify a material statement or representation made in the Form P3 declaration which was known to be false, or ought reasonably to have been known by the patent applicant to be false, at the time of making the statement. If not, the false statement or representation may render a granted patent invalid with no means of rectifying the invalidity, and accordingly no means of defending the patent against revocation proceedings in this regard.
In his analysis of the matter, Judge Kollapen referred to previous case law in which it was found that it is the sole responsibility of the patent applicant to consider the facts carefully in making the declaration and that the patent applicant must act in “the utmost good faith” when making the declaration. Judge Kollapen also considered the meaning of Section 61(1)(g) of the Act and held that there is a timeline set when assessing the falsity of a material misrepresentation, which is “at the time when the statement or representation was made”. He also considered that it was a matter of public policy to prevent dishonest patentees from being able to abuse the system by merely making subsequent amendments to an application to rectify a falsity should they be found out and need to do so.
What does this mean for South African patent applicants and patentees? It is likely that in light of this case many granted South African patents may in fact be invalid with no means of rectifying the invalidity. It is essential that a patent applicant considers carefully whether there are any possible issues regarding validity of the patent application and rectifies these issues before signing and lodging the Form P3 declaration. Such issues may, amongst others, include any objection raised by an examiner pertaining to validity of the patent in any Search Report or Written Opinion issued during the International Phase of a PCT application, or in any corresponding foreign application. Should the patent applicant consider that such an objection is valid, it is important to amend the South African patent application before signing and lodging the Form P3. Only if the invalidity is one which the patent applicant was not aware of and ought not reasonably to have known at the time when making the declaration, is there no problem with the Form P3 declaration. Nevertheless, any patent invalidity should be corrected as soon as the patentee becomes aware of it.
A Form P3 declaration may be late-filed on payment of a small additional fee, should these issues not be resolved before the deadline for filing a South African complete or national phase patent application.