South African Patent and Design laws require that patents and designs be renewed annually from their third year. These laws allow for restoration of patents and designs where such have lapsed unintentionally. The lapsing must have been unintentional and there may not be an undue delay between the time that the lapsing came to the attention of the registered owner and the time that he lodges a restoration application.
Exactly what amounts to an undue delay is open for interpretation and depends on the specific circumstances. Still, the prudent advice has always been to take action within days rather than weeks to attend to a restoration, and that lodging a restoration application in a matter of months instead of a matter of a few weeks should make the application for restoration questionable. If the Registrar of Patents and Designs allow a restoration application that does not meet these criteria, his decision would be vulnerable on review. Such a review will typically form part of a defence raised during enforcement proceedings relating to the relevant IP right. There is no easy or cheap comeback from an adverse review decision.
For many years there has been an impression that the actual contents of supporting affidavits lodged with restoration applications were not scrutinized in the greatest detail. The impression existed – rightly or wrongly - that almost any reason advanced on affidavit would be sufficient.
This has changed - there is a new sheriff in town and he is cleaning up: a new Registrar of Patents and Designs was recently appointed for South Africa. Refreshingly, the new Registrar has adopted a stricter and, dare we say, legally correct interpretation of the restorations requirements for patents and designs. Word on the street has it that restoration applications are now thoroughly analysed and that several applications have already been rejected for failing to present full and proper reasons or for including contradictory statements.
Although parties on the receiving end of this may very well feel aggrieved by what they may view as unexpected change, the new Registrar’s approach has to be applauded. The restoration provisions of the Patents and Designs Acts are not intended to provide a rubber stamp option for renewing a patent or design after it has lapsed for non-payment of a renewal fee. It is there for genuine cases of unintentional lapsing in respect of which a restoration application is lodged without undue delay. The rights holder needs to be able to fully explain the surrounding circumstances that led to lapsing and has to act with reasonable alacrity.
Most definitely, a decision to abandon a patent or design for lack of funds will, correctly, not be open for reversal by restoration.
It is in the public interest that the patent and design registers reflect with certainty which patents and designs are enforceable. Leaving a door open for an unscrupulous rights holder to belatedly restore a lapsed patent or design, sometimes many years after the fact, for less than candid reasons serves a very narrow, and illegitimate, interest.
Patent and Design owners will now need to consider their options very carefully when they decide to abandon a patent or design by non-payment of a renewal fee, since the comeback options are now more limited.
Our advice is that it is much more prudent to keep renewing existing IP rights in South Africa. The renewal costs of these are in any event so low, both in real terms and when compared with the costs in other jurisdictions, that cost should in most instances not be a relevant factor in determining whether to renew a South African patent or design.