Significant capital and effort are invested in creating an invention, applying for and obtaining a granted patent, and then ensuring that the granted patent is in a valid form that meets all the requirements for patentability. However, protecting an invention doesn’t end there – it is just as important to ensure that the granted patent remains in force and that it can be enforced as soon as any infringement is identified. There are several key areas of patent management that need to be safeguarded to ensure that it is enforceable.
Renewal fees, restoration and enforcement of a patent that has lapsed
In South Africa, renewal fees are payable annually from three years after the date of application. The prescribed fees are payable on form P10 on or before the anniversary of the date of application, or within six months thereafter on application to the Registrar and on payment of the prescribed (late) fee. Provided that renewal fees or late fees are paid correctly, a valid patent will remain in force on the Patent Register. If a renewal fee is not timeously paid, or paid within the 6-month grace period, the patent will lapse. Provision is made in the Patents Act for restoration provided that the patentee did not intentionally allow the patent to lapse, and that there was no undue delay in applying to restore the lapsed patent.
However, unless and until a lapsed patent is restored, it cannot be enforced against an infringer. Restoration requires a substantive application supported by evidence on the affidavit, and an opposition period of two months applies. This may be detrimental to a possible urgent application, and will certainly delay obtaining relief in an infringement action. Such a restoration application may also be opposed, creating a further delay. Another difficulty is that damages cannot be claimed for infringement that took place during the period when the patent had lapsed. In addition, it is not possible to institute infringement proceedings against a person who, during the period when the patent had lapsed, commenced using or exercising the invention to which the patent relates and who continues to use or exercise the invention after the patent has been restored.1 The further use or sale of products produced by such continued use or exercise can also not be prevented. Read more