Administrative law and intellectual property

November 1st, 2013
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By Robyn-Leigh Merry and Muhammed Vally

Administrative law is the branch of public law that regulates the activities of bodies that exercise public powers and perform public functions (C Hoexter Administrative Law in South Africa (Cape Town: Juta 2007) at 2). Due to its nature and scope, administrative law permeates a number of branches of the law and the law relating to the protection of registered intellectual property is no exception. Administrative action can be questioned on the basis of either an administrative appeal or by judicial review. An appeal is indicated when the reasoning for the decision and the merits of the case are under consideration, while a review considers whether the decision was arrived at in a rational fashion. However, it is well recognised that the boundary between appeal and review is often indistinct, particularly with respect to judicial review where the focus of the review often falls on the decision itself rather than the process by which the decision was made (op cit 106).

The South African patents and designs and the South African trademarks offices are administrative offices headed up by the registrar of patents and designs and the registrar of trademarks, respectively. The enabling legislation with respect to patents, designs and trademarks – namely, the Patents Act 57 of 1978, the Designs Act 195 of 1993 and the Trade Marks Act 194 of 1993 – grants administrative power to the relevant registrars to exercise the powers and perform the duties conferred or imposed on them by such legislation. These public authorities possess only that power that is lawfully conferred on them and authorised. Therefore, all actions they take in the performance of their functions must be justified in terms of the enabling legislation. The nexus between administrative law and intellectual property law is best illustrated with reference to the following case law in this respect.

Trinamics Incorporated v The Registrar of Patents and Others (GNP) (unreported case no: 23902/2010, 29-3-2013) (Prinsloo J): This recently handed down judgment dealt with a judicial review brought in terms of the Promotion of Administrative Justice Act 3 of 2000 (PAJA). This judicial review was a review of the administrative action of the registrar in terms of the renewal of a patent. During 1992, and with respect to that calendar year, the registrar renewed South African patent ZA88/0864 despite the fact that the payment tendered with respect to such renewal fee was R 6 less than the legislated fee of R 36. In accordance with standard procedure under PAJA, the registrar was asked to furnish reasons with respect to this renewal and in response to such request the registrar condoned this irregularity in terms of an enabling regulation in the Patents Act that provides for condonation in the event that the effect of such condonation will not be detrimental to the rights of any party.

On the basis of the facts of this case, the court held that the registrar’s administrative act in accepting the short payment was irregular, but emphasised that an unlawful administrative act remains valid until set aside by a court. The court then refused to set aside this administrative act as a significant amount of time had passed since it was committed. The public interest in the finality of administrative decisions and administrative functions was found to outweigh the relief sought by the applicant.

University of Pretoria v The Registrar of Patents and Others (unreported case no: ZA2004/2575; ZA2005/08679, 25-10-2011) (Prinsloo J): This matter, which was heard in the court of the commissioner of patents, pertained to the acceptance of two patent applications and the refusal by the registrar, when requested to do so, to rectify the patent register by marking the aforementioned applications as lapsed in accordance with the relevant deeming provisions in the Patent Act. Consequent on such refusal an appeal against the decision was brought by the University of Pretoria.

The regulations to the Patent Act allow for the acceptance of an application for a patent to be delayed to a date not later than 18 months after the date of application. To this effect the registrar is empowered under the Act to grant an extension with respect to such acceptance. On a strict reading of the relevant section of the Act the court found that the registrar was not legally competent and empowered in terms of s 42(3) of the Act (read with reg 46) to grant extensions, particularly unapplied for, unsubstantiated and unfunded extensions, for the length of time that she did. For this reason the court held that the registrar’s administrative action to be invalid and confirmed that the patent applications in question had lapsed.

Kaltenbach Thuring Société Anonyme v Grande Paroisse Société 2001 BIP 62 (CP) (Roux J): This matter involved the setting aside of an order for the attachment of a patent. The court held that the patent had lapsed prior to the affecting of the attachment order due to the incorrect actions of the registrar. No attachment could be made since a lapsed patent is merely a spes and not a real right, meaning that it cannot be attached. The registrar had improperly accepted the payment of a renewal fee after the patent had already lapsed thereby allowing the patent to ostensibly survive.

The court held that in this instance the registrar had acted ultra vires the Act as s 46(2), applicable to renewal fees, provides that the non-payment of renewal fees within a specific time period results in the lapsing of the patent and this cannot be overridden by the registrar.

Weekly Property Trader v LS Erasmus and Another 2002 BIP 303 (T) (Claassen AJ): This matter, which was structured as a review, pertained to the powers of the registrar of trademarks to provide for an extension of time after the lapse of the period allowed for completing the application in terms of s 20(2) of the Trade Marks Act.  The facts of this case pertain to two competing trademarks, namely Property Trader and Weekly Property Trader, both of which could not be simultaneously registered.

The first of the aforementioned marks was under prosecution and during the term of such prosecution a number of extensions were applied for. One of the extensions was applied for outside of the period envisaged by s 20(2) of the Act but was nonetheless granted by the registrar. The court held that once the application had lapsed, as given in terms of s 20(2) of the Act, an extension of time could not be granted by the registrar and therefore it also held that the registrar was acting ultra vires the Act in this instance.

Buzbee (Proprietary) Limited v The Registrar of Patents and Another 2010 BIP 42 (CP) (Ebersohn AJ): Administrative law also aids in the interpretation of enabling legislation, as is evident in the Buzbee matter wherein a provision in the patent regulations (reg 90(1)) that effectively provided for the deemed revocation of a patent in the instance that the patentee in revocation proceeding fails to timeously file its counterstatement. In this matter the validity of reg 90(1) in terms of the ability of the regulation to bring about the revocation of a patent was questioned and was found to be invalid given that the grounds for the revocation of a patent are specifically set out in the Patent Act.

The case law cited above is illustrative of the general principles of administrative law that provide for the evaluation of the exercise of public power as set out in the relevant enabling legislation. This system enables public entities, private entities and individuals to question the rationale and method behind the exercise of public power and the decision-making process when such power is exercised.

All instances where public power is exercised can be viewed through the spectacles of administrative law, as emphasised in the above-mentioned case law, showing that intellectual property law is no exception. Public functionaries exercising such public power in terms of enabling legislation pertaining to intellectual property are also accountable in terms of administrative law.

Robyn-Leigh Merry BSc (Hons) LLB (Wits) and Muhammed Vally BSc LLB (UJ) are attorneys at DM Kisch Inc in Johannesburg.

This article was first published in De Rebus in 2013 (Nov) DR 26.