Payment of South African renewal fee

In the light of this statement, an application was brought by the University of Pretoria, Adams & Adams and the South African Institute of Intellectual Property Law in which the Registrar of Patents was the Respondent, in respect of the University of Pretoria’s Patent No. 94/0252 for a declaratory order effectively asking that it be ordered that an extension of time for late paying of renewal fees can be made in the six-month “grace” period after the normal due date.  That application was originally brought before the Deputy Judge President of the Transvaal requesting it to be referred to the Full Bench of the Transvaal Provincial Division of the High Court for three judges to rule on it.

On 4th December 2002, the Honourable Justices Van der Walt, Mynhardt and Southwood, sitting as the Full Bench of the Transvaal Provincial Division heard the matter and delivered a decision in which the order included the following:

• A declaration that the renewal fee and the request for extension of time to pay the renewal fee of Patent No. 94/0252, in the name of the First Applicant, submitted by the Second Applicant on form P.10 on 25 January 2002 (i.e. shortly after the eighth anniversary of the date of filing of the complete specification of 13 January 2002) was correctly accepted by the Respondent;
• A declaration that the proper construction to be placed on section 46(2) of the Patents Act No. 57 of 1978 is that an application as envisaged by the proviso to the section can correctly be made at any time within the six month period referred to in the section upon payment of such additional fee as may be prescribed; and
• A declaration that the failure of the First Applicant to pay its renewal fee by 13 January 2002, and only to pay it on 25 January 2002, together with the prescribed additional fee paid on that date, did not result in its Patent No. 94/0252 lapsing.

As a result of this declaratory order, it is clear that renewal fees can validly be paid belatedly in the six month period following the anniversary of the date of filing of the complete specification in South Africa, if application for an extension of time for paying such fees is made in that six-month period.

Supplied by David F. Sheppard
Adams & Adams
Pretoria