SOUTH AFRICA Law and Practice Contributed by: At van Rooy, Annelise Engelbreg, Ursula Baravalle and Stuart Miller, KISCH IP
1.7 Third-Party Rights to Participate in Grant Proceedings For patents and registered designs, there is no opportunity for third parties to participate in grant proceedings. The applicable procedure is the filing of an application for the revocation of the patent or registered design post-grant. Concerning plant breeders’ rights, both the application and intention to grant a plant breed- ers’ right are published in the plant variety jour- nal, and third parties have the right to object to the grant thereof. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right Remedies against a refusal to grant exist for all applicable intellectual property rights. These include the following: • patents and registered designs are subjected to formal examination only, and no substan- tive examination is conducted – any refusal to grant a registered design or patent by the registrar may be challenged by a review appli- cation to the commissioner of patents (then further to the court in the case of patents), and to court in the case of registered designs; and • with respect to plant breeders’ rights, any decision by the registrar that adversely affects the rights of the applicant may be appealed to the appeals board. Further appeal to the court is possible. 1.9 Consequences of Failure to Pay Annual Fees The consequences of not paying annual fees for the different intellectual property rights, where applicable, are as follows.
• Patents: Non-payment of renewal fees will lead to a lapse of the patent. Restoration of the patent is possible but, after the res- toration of the patent and under specific circumstances, there may be limited rights of enforcement or obligations to pay compen- sation to third parties who incurred costs to work the invention during the period of lapse and restoration. • Registered designs: Non-payment of renewal fees will lead to a lapse of the design. Resto- ration of the design is possible but, after the restoration of the design and under specific circumstances, there may be limited rights of enforcement or obligations to pay compen- sation to third parties who incurred costs to work the invention during the period of lapse and restoration. • Plant breeders’ rights: The registrar may ter- minate a plant breeders’ right if renewal fees are not paid. 1.10 Post-Grant Proceedings Available to Owners of Intellectual Property Rights Amendments of the granted rights are possible. The procedures and limitations of these amend- ments are as follows. • Patents: Correction of clerical errors is pos- sible on request to the registrar. If the cor- rection materially alters the scope of the document, the registrar may require the pub- lication of a notice to amend the document. If an opposition to the amendment occurs, the commissioner of patents will decide the matter. • Concerning amendments to the specifica- tion of a patent, amendments introducing new subject matter or claims not fairly based on the subject matter are not permissible. Amendments may be applied for at any time, where the applicant will give reasons for the
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