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Patent and design restorations – there is a new sheriff in town

  • South Africa
  • Intellectual property

10-04-2017

South African Patent and Design laws require that patents and designs be renewed annually. There is allowance for restoration of patents and designs that have lapsed unintentionally, provided a restoration application is lodged without undue delay.

Exactly what amounts to an undue delay is open for interpretation and depends on the specific circumstances. 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 restoration application vulnerable on review.

In terms of the unintentionality requirement, there has been a long standing impression that restoration application affidavits are not scrutinized in detail. The impression existed – rightly or wrongly - that almost any reason advanced on affidavit would be sufficient for a restoration to be allowed.

This has changed - there is a new sheriff in town, in the form of a new Registrar of Patents and Designs for South Africa.

Refreshingly, the new Registrar has adopted a stricter and, dare we say, legally more correct interpretation of the restoration 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 patents or designs after lapsing. It is there for genuine cases of unintentional lapsing in respect of which a restoration application is lodged without undue delay. The patent or design owner has 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 financial considerations will, correctly, not be open to reversal by restoration.

This is correct since 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 patent or design owner 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 before 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 financial considerations should in most instances not be a relevant factor in determining whether to renew a South African patent or design.

 

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