Case Summary of Buzbee Judgment: extension of time in patent revocation proceedings
24/05/2010

Judgment was handed down in the Court of Commissioner of Patents for the Republic of South Africa, on 14 April 2010, in the matter between Buzbee (Pty) Ltd (“Buzbee”) vs The Registrar of Patents and Cobb International Ltd (“Cobb”).

The matter relates to a revocation of South African Patent No. 2002/8482. The patent was granted to Cobb in December 2003; however, in December 2007, Buzbee sought that the patent be revoked. After service of the revocation application upon Cobb’s attorneys, the patentee had two months within which to lodge and serve a counterstatement, in terms of Patent Regulation 90(1). However, attorneys for the patentee proceeded to lodge and serve their counterstatement one day after their two month deadline. Buzbee then requested the Registrar to amend the patent register and mark the relevant file accordingly, as the patent was deemed to be revoked in terms of Regulation 90(1).

The attorneys for Cobb then filed a P4 request with the Registrar, requesting an extension of time of one day within which to file their counterstatement, and provided evidence by means of an affidavit, in which an employee stated that failure to comply with the deadline provision in Regulation 90(1) was due to her negligence and was not a willful default by the patentee.

The Registrar later granted the extension stating several reasons for her decision. Firstly, the fact that the counterstatement had been served and filed on the day after expiry of the deadline showed it was never the intention of the patentee to allow the patent to be revoked. Secondly, Regulation 99, which allows for extension of time limits by consent of the parties or by the Registrar, on request, did not specify that request to the Registrar had to be made before expiry of a deadline, implying that the registrar’s discretion was not limited. Also, the grounds for revocation, provided in section 61(1) of the Patents Act, were the only grounds for revocation, and Patent Regulations cannot supersede the Patent Act. Instead, they provide a means to give effect to the Act. The Registrar also stated that if her discretion was not exercised, while balancing interests, the patentee would have been gravely prejudiced.

At this stage, Buzbee lodged an appeal in terms of section 75 of the Patents Act, against the decision of the Registrar to the Commissioner of Patents. It was contended that the Registrar could not, after the expiration of a deadline and whilst the patent was deemed revoked, extend the time period in which to file a counterstatement.

P. Z. Ebersohn (AJ), sitting as the Commissioner of Patents, considered the justifications of the Registrar, accordingly, and held that adding a further ground for revocation of a patent was clearly irregular and contrary to section 61 of the Patents Act. It was therefore within the Registrar’s ambit to act with discretion. He went on to agree with the Registrar’s reasoning that Patent Regulation 99 did not specify when a request for extension of time limits could be made to the Registrar. The respondent’s request for an extension of a time limit after its expiry was therefore allowable. The appeal was dismissed accordingly.


Thamaray Govender
Candidate Attorney
thamaray@adamsadams.co.za