Recognition of a decision on restoration of priority under PCT in South Africa
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In terms of the Paris Convention, a patent application may claim priority from a prior filed application in a convention country relating to the same subject matter, provided that the prior filed application in the convention country was lodged not earlier than one year before lodgement of the application claiming priority. In other words, there exists a 12 month period in which to claim priority. Rule 26bis.3 of the regulations of the Patent Cooperation Treaty (PCT) makes provision for the restoration of the right to claim priority if an international application has an international filing date which is later than the date on which the priority period expired but within the period of two months from that date. Upon request of the applicant, the receiving Office shall restore the right of priority if the Office finds that a criterion applied by it (“criterion for restoration”) is satisfied, namely, that the failure to file the international application within the priority period: (i) occurred in spite of due care required by the circumstances having been taken; or (ii) was unintentional. Each receiving Office shall apply at least one of these criteria and may apply both of them. The question which now stands to be answered is whether or not a decision by a receiving Office to restore the right of priority of an international application is recognised by the South African Patent Office as designated Office. The South African Patents Act (the Act) is silent on the issue of the recognition of a decision by the receiving Office on restoration of priority rights in terms of Rule 26bis and 49ter of the PCT regulations. The South African Patent Office has not notified WIPO in terms of regulation 49ter.2(h) that the provisions of this specific regulation are not compatible with our national law and the position is therefore a little uncertain. The South African Patents Act does however provide that, when processing the national phase of an international application, the patent office shall apply the Patent Cooperation Treaty and the regulations made thereunder, and the other provisions of the Act. Further, that PCT, regulations made there under and administrative instructions issued there under shall prevail in the event of any conflict with the Act. In light of this, Rule 49ter.1(a) provides that a decision by the receiving Office to restore the right of priority based on a finding that the failure to file the international application within the priority period was in spite of due care required by the circumstances having been taken, shall be effective in each designated State. Conversely, a decision in terms of Rule 49ter.1(b) is effective in any designated State whose applicable national law provides for restoration of the right of priority based on that criterion, which our national law does not provide for. It must be borne in mind that it is generally accepted practice in South Africa that the 12 month convention priority period is a non-extendable period in respect of prior applications filed in a convention country and this may well be the stance which the South African Registrar or Commissioner of Patents may adopt when confronted with a decision on the recognition of restoration of priority under the PCT, as it may be weary of departing from the generally accepted norm. The Registrar or Commissioner does however have discretionary power to authorise the condonation of any irregularity in procedure in any proceedings before him, provided such condonation is not detrimental to the interests of any person. It is therefore possible to rely on this discretionary power of condonation or to apply to the Registrar for condonation in a case such as this, since the Registrar shall not exercise his discretionary power adversely to the applicant without giving the applicant an opportunity of being heard. Until such time when the South African Patents Act and regulations have been revised to comply with the PCT regulations regarding the recognition of a decision to restore the rights of priority, or until it has been heard by the Commissioner, it remains a moot point in South African patent law and the above approach is probably the best way to go. Wynand Fourie Candidate Patent Attorney wynand-f@adamsadams.co.za |
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| 3/06/2012 | ||
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The firm practises directly in several Southern African countries and through long-established associates in others.
