South Africa Afrique du Sud Südafrika. Report Q189. in the name of the South African Group by Hans H. HAHN, Janusz LUTEREK and HUGH MOUBRAY

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1 South Africa Afrique du Sud Südafrika Report Q189 in the name of the South African Group by Hans H. HAHN, Janusz LUTEREK and HUGH MOUBRAY Amendment of patent claims after grant (in court and administrative proceedings, including re examination proceedings requested by third parties) Questions 1) Does your national law permit post grant amendment of patent claims? Yes. The relevant Section is Section 51 of which the pertinent subsections are quoted in what follows: 51 Amendment of specification 1) An applicant for a patent or a patentee may at any time apply in the prescribed manner to the registrar for the amendment of either the relevant provisional specification or the relevant complete specification, and shall in making such application, set out the nature of the proposed amendment and furnish his full reasons therefor. 2) An application for the amendment of a specification that is open to public inspection shall, except in the case of an application so open in terms of section 43 (3), be advertised in the prescribed manner. 3) a) Any person may oppose such application for amendment within the prescribed time and in the prescribed manner. b) Such opposition to such application for amendment shall be dealt with by the commissioner in the prescribed manner, and the commissioner shall determine whether and on what conditions, if any, the amendment ought to be allowed. 4) Where the acceptance of a specification concerned has not been published in terms of section 42 or there is no opposition in terms of subsection (3) (a) of this section, the registrar may determine whether and on which conditions, if any, the amendment ought to be allowed. 6) No amendment of a complete specification which becomes open to public inspection after the publication of the acceptance of the specification in terms of section 42, whether before of after it so becomes open to public inspection, shall be allowed if a) the effect of the amendment would be to introduce new matter or matter not in substance disclosed in the specification before amendment; or b) the specification as amended would include any claim not fairly based on matter disclosed in the specification before amendment. 1

2 7) No amendment of a complete specification which has become open to public inspection after the publication of the acceptance of the specification in terms of section 42 shall be allowed if the specification as amended would include any claims not wholly within the scope of a claim included in the specification before amendment. Are utility models if available treated the same way as patents or differently? If so, what are the differences? Utility models are not known in South African law. Instead, South African Design Law provides for a category of so called functional designs. These are governed by the South African Designs Act and fall outside the scope of the present question. 2) Who is entitled to request post grant amendment of patent claims under your national law? Only the patentee can apply. 3) What is the procedural framework for requesting post grant amendment of patent claims under your national law, in particular: What procedures (judicial, administrative or other) are available for dealing with requests for post grant amendment of patent claims under your national law? a) ex parte voluntary application for amendment The procedure is by way of application to the Registrar of the Patent Office (see Section 51 quoted under 1)). It is extremely important to state the reasons for the amendment fully and truthfully. If this requirement is not observed, any third party may at an stage apply to the Commissioner for the amendment to be set aside. b) further amendments if a) is opposed can be applied for at any stage of a). If this leads to a settlement of opposition in a), the new amendments will be advertised and become open to opposition to third parties Otherwise, the court may decide on the allowability of the further amendments and if found allowable, order their advertisement for possible opposition by any interested third party (other than the previous opponent). c) proceedings in revocation or other litigation As for b) above, but application must then be made to the Court and not to the Registrar. Are all of these procedures freely available under your national law to those wishing to request post grant amendment of patent claims, or does the law give priority to certain procedural measures in certain situations? The only restriction is as per 2) above. One other point to consider is that in ex parte unopposed proceedings (see a) above), the amendments are allowed without examination as to the merits by the office of the Registrar of Patents, whereas in the case of an opposition or other litigation any decision is made by the court. Is it possible under your national law for patentees to make multiple subsequent amendments of patent claims directed towards individual alleged infringers? The law does not limit the number of amendments made. However, the effects of the amendments, once made, are cumulative and all amendments are effective equally in relation to the public as a whole. The amendments cannot be applied selectively to individual parties and not to others. This does not limit the right of patentees to agree inter partes as to the enforcement or non enforcement of the patent against certain acts committed by a particular party. 2

3 An amendment once made cannot be undone except by way of a further amendment meeting all the requirements. It is possible to amend to include multiple independent claims directed towards different infringers. Who is entitled to amend claims? Is this limited to courts or do also the patent offices have the competence to amend claims? Please limit the answer to a general description of the proceedings avoiding discussion of procedural details and peculiarities. All amendments must be applied for by the patentee. The amendments in unopposed applications are granted by the patent office (Registrar of Patents), subject to appeal to the Court and subject to being set aside on application to the court by any party at any subsequent time on good cause being shown (e.g. not made in good faith; reasons given for the amendment not truthful or that the amendments were ultra vires the act). Amendments made during litigation are decided on by the Court and become binding as between the parties after the Court s decision has become final. 4) What are the substantive conditions for allowing post grant amendment of patent claims under your national law, in particular: See Section 51 quoted under 1) above. In South African Law a distinction is made between an amendment and a correction (of clerical errors or errors in translation Sect. 50 (1) (a)). Corrections of clerical errors and errors in translations Sect. 50 (1) (a) can be made at any time, and may even broaden the scope of a claim. Is there a distinction in your national law between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? The question is not understood. Only the patentee can apply for an amendment. The rights of third parties are restricted to opposing such amendments on the grounds available in law or to apply for amendment already made to be set aside on the ground that the amendments should not have been allowed (see above). In what ways may patent claims be amended post grant under your national law? See Section 51 quoted above. Is it a requirement (or a possibility) under your national law that the description/ specification be amended to correspond with amendments of the claims? Amendments to the description/specification are possible. The effect of such amendments must not be to introduce new matter, meaning matter not in substance described/ disclosed in the specification (including the claims and drawings) as originally filed, except in order to correct an obvious mistake. There exists very little case law in South Africa on the subject. However, according to existing practice, there exists considerable freedom to rely on matters apparent (to the addressee/skilled reader) from the context of the description, the wording of claims and an interpretation of the drawings. (This is in line with the South African practice to include omnibus claims based on the drawings). The prevailing view in South Africa places the emphasis on the substance which is disclosed in contrast to EPO practice, which places the emphasis on following the precise wording used in the documents as filed originally. 3

4 Subject to the aforegoing, it is indeed possible, even though not an absolute requirement (according to existing case law), to amend the specification/description in line with amendments made to the claims. Is it possible to make amendments for the purposes of clarification and/or correction of errors? Yes. However amendments to correct errors must be distinguished from the correction of clerical errors for which a different procedure is followed. 5) What are the consequences for third parties of post grant amendments of patent clams under your national law, in particular: The effect of post grant amendments of claims is retroactive to the date of filing of the patent application. This also raises questions about the liability to pay royalties of existing or past licensees. Can they demand repayment of past royalties? If so, how far back? Does prescription apply to royalties paid more than 3 years back? To what extent can licensors contract out of such an obligation by appropriate wording of the licence agreement? Could third parties (e.g. under common law) claim damages or other relief, e.g. compulsory licence, if they availed themselves of the subject matter of a patent, knowing same to be invalid and subsequently, after amendment finding themselves in an infringement situation? All of the above are open questions to which existing court decisions provide no apparent answers and on which the group was unable to arrive at an opinion. All that can be said is that the Commissioner has the discretion not to award damages and to award costs as he deems fit if the patentee has framed his claims broadly and permitted them to remain so framed knowingly. What are the consequences for third parties liability for patent infringement where patent claims are amended post grant? a) If the amendment repairs a previously existing invalidity, third parties certainly become liable as from the date of advertisement of the amendment. b) As regards liability for infringement prior to the date of advertisement of the amendments, it is possible that third parties could raise the defence that when they committed the infringing acts in the past they were entitled to believe that the patent is invalid. In South African Law invalidity is a defence against infringement, i.e. there can be no infringement of an invalid claim. It is a further defence in South African Law against liability for damages if the infringer can show that it had no reasonable means to know that it was infringing. A sub question arises whether the aforesaid defences could be raised if the set of claims prior to amendment included any claims which were valid and infringed prior to the amendment. The Commissioner has a discretion to award damages for a partially valid patent but has never done so in the past. Are amendments effective only inter partes or, conversely, erga omnes, including in relation to previously decided cases? The last phrase is understood to relate to decided cases concerning the same patent. This raises a further question: if relevant at all, must a distinction be made between decisions involving the same parties and decisions involving different parties? Amendments, once granted, are effective ergo omnes (note: but see the sub-questions raised in the introduction to question I5)). 4

5 Are amendments effective only ex nunc or also ex tunc? Does that depend on the context in which the amendment is made? The context in which the amendment is made is irrelevant, because the effect of the amendment applies to everybody (i.e. not only the parties in a particular dispute)? II) Proposals for substantive harmonisation The Groups are invited to put forward their proposals for adoption of uniform rules, and in particular to consider the following questions: 6) Should post grant amendment of patent claims be permitted? The South African Group thinks so quite definitely. This must definitely apply to non examination countries. However, having regard to the imperfections of even the best examination systems, it is believed that this should apply everywhere. 7) Who should be entitled to request post grant amendment of patent claims and who should have the competence to amend? In principle, only the patentee should have the right to apply for amendments (perhaps in very specific circumstances, such as inaction of the patentee, also an exclusive licensee). Where national law permits the right to enforce or defend the patent to be transferred to another party (e.g. a licensee or beneficial owner of the patent) such transfer should logically include the right to apply for amendment. The amendment should in non litigated matters be made by the patent office (or its designated officer, e.g. the Registrar). In litigation the amendment should be decided upon by the or a competent court which may delegate the administrative aspects to the patent office. 8) What should be the substantial conditions for allowing post grant amendment of patent claims? In principle, the South African Group is satisfied with the relevant provisions in South African national law as set out above. Having regard to the length of the term of a patent, it is impossible to predict at the time of filing and (even where the benefits of an examination are available) prior to grant what may happen during the life of the patent. It is believed that the basic principles and flexibilities applied in the South African national system provide a fair balance between the justifiable interests of the patentee and those of the public. These principles have been developed over a period of a century in the course of numerous changes in South African legislation, invariably also with due consideration to developments of the laws of other countries, English speaking or otherwise, including the Strasbourg Convention. It is possible that some adaptations may be needed in countries where different jurisdictions apply to infringement and validity matters respectively. The South African Group feels that South African national law correctly reflects the desirable substantial conditions. These may be summarised as follows: a) Amendments must in substance have a basis in the disclosure as originally filed, such disclosure including the description/specification, claims and drawings. The test should be the understanding of the addressee skilled in the art. The precise wording used originally should not be the sole criterion. b) Each amended claim must be wholly within the scope of at least one granted claim. 5

6 c) It should be possible to correct an obvious mistake, obvious meaning that the mistake will be apparent to a skilled addressee reading the specification, claims and drawings intelligently and who makes a bona fide effort to understand the documents, applying the knowledge in the art existing on the date of filing the application. Such corrections can even broaden the scope. d) It should be possible to introduce explanations, e.g. of the terminology used, and of differences between the claimed invention from the prior art and in support of inventive step. It is submitted that the above strikes the correct fair balance between the interests of the patentee and of the public. 9) Should there be a distinction between the remedies available to patentees/third parties and/or the substantive conditions applicable to patentees/third parties for allowing post grant amendment? Third parties should have no right to participate in the amendment process as such other than: a) to object to the grant of the amendments on grounds available in law (which may include the ground that the conduct of the patentee has been such that the court should disallow the amendments); b) to seek remedies against any prejudice resulting from the amendment as granted. Again the conduct of the patentee should be taken into account. 10) What should be the consequences for third parties liability for patent infringement where patent claims are amended post grant? The South African Group has reached no conclusions. See also comments and questions raised further above under I 5). 11) Does your Group have any other views or proposals for harmonisation in this area? No. Summary South African Patent Law permits the patentee to apply for post grant amendments of claims at any time, even after a patent has already expired. It is necessary to state fully and truthfully the reasons for making the amendment. The amendments must in substance have a basis in the disclosure as originally filed, including the description, claims and drawings as understood by the person skilled in the art. The precise wording used originally is not the sole criterion. Each amended claim must be wholly, within the scope of at least one granted claim. Correction of an obvious mistake is permitted, even if the scope of a claim is broadened thereby. The South African Group believes that the above principles of South African Law strike the correct balance between the interests of the patentee and of the public and are suitable for purposes of harmonisation. 6

7 Zusammenfassung Das südafrikanische Patentrecht ermöglicht es dem Patentinhaber jederzeit, sogar nachdem ein Patent bereits verfallen ist, auch nach der Erteilung die Änderung der Patentansprüche zu beantragen. Die Änderung muss vollständig und wahrheitsgemäss begründet werden. Die Änderungen müssen im Wesentlichen aus der ursprünglich eingereichten Offenbarung ent nehmbar sein, einschliesslich der Beschreibung, Ansprüche und Zeichnungen, wie diese für den Fachmann verständlich sind. Der genaue ursprünglich verwendete Wortlaut ist nicht ausschliesslich entscheidend. Jeder geänderte Anspruch muss voll innerhalb des Schutzumfanges wenigstens eines erteilten Anspruchs liegen. Die Berichtigung eines offensichtlichen Irrtums ist auch dann statthaft, wenn dadurch der Schutzumfang erweitert wird. Die südafrikanische Gruppe ist der Ansicht, dass die oben genannten Grundsätze des südafrikanischen Rechtes den richtigen Ausgleich zwischen den Interessen des Patentinhabers und denen der Öffentlichkeit bilden und deshalb für eine Harmonisierung geeignet sind. 7