Trustco Group International (Pty) Ltd v Vodacom (Pty) Ltd

Trustco Group International (Pty) Ltd (Trustco) held South African Patent no 2010/03199, which lapsed on 26 November 2011 due to non-payment of prescribed patent renewal fees. Trustco applied for restoration of the patent in terms of section 47(1) of the Patents Act 57 of 1978. The restoration application was advertised in the Patent Journal on 26 June 2013. Vodacom (Pty) Ltd opposed the restoration and filed a notice of opposition on 26 August 2013. Under Regulation 83 of the Patent Regulations, Trustco's counterstatement was due by 28 October 2013 (as 26 October fell on a Saturday). On 30 October 2013, two days after the deadline, Trustco's former attorneys requested a two-month extension from the Registrar of Patents, which was granted. Vodacom appealed this grant of extension to the Commissioner of Patents (Makgoba J), who upheld the appeal, set aside the extension, and declared Trustco's restoration application abandoned.

• Whether the Registrar of Patents has the power under section 16(2) of the Patents Act 57 of 1978 to extend time periods specified in Regulation 83 of the Patent Regulations after the expiry of the prescribed time period
• Whether the deeming provisions in Regulation 83, which state that an application 'shall be deemed to be abandoned' if a counterstatement is not lodged within the prescribed period, limit or override the Registrar's statutory power under section 16(2) to extend time periods
• Whether a regulation can limit or override a general remedial power conferred by the parent statute
• The proper interpretation of the phrase 'save where it is otherwise expressly provided' in section 16(2) of the Patents Act

1. The appeal was upheld with costs including the costs of two counsel. 2. The decision of the court below was set aside and substituted with the following order: 'The appeal against the second respondent's decision to grant the appellant an extension of time for the filing of its counter-claim is dismissed with costs.'

The binding legal principle established is that section 16(2) of the Patents Act 57 of 1978 confers upon the Registrar of Patents a broad discretionary power to extend time periods specified in the Act or the Patent Regulations, either before or after their expiry. This power is only restricted where it is 'otherwise expressly provided' in the Act itself. Regulation 83 of the Patent Regulations, which contains a deeming provision stating that an application shall be deemed abandoned if a counterstatement is not lodged within the prescribed period, does not expressly limit the Registrar's statutory power under section 16(2). A regulation cannot override or limit a general remedial power conferred by the parent statute. The deeming provision in Regulation 83 does not fall within the proviso 'save where it is otherwise expressly provided' in section 16(2), as it does not expressly make provision in relation to the exercise or prevention of exercise of the Registrar's remedial discretionary power. The rule of statutory interpretation that a specific provision overrides a general provision applies only to provisions within the same legislative instrument; a specific provision in subordinate legislation cannot override a general provision in a statute.

The Court made several non-binding observations. It noted that the discretion conferred by section 16(2) must be exercised judiciously and with due regard to the rights of both the applicant and the objector. The Court observed that remedial powers, such as the power to extend time periods aimed at avoiding harsh results, should be extended as far as the wording of a statutory provision will admit, citing Slims (Pty) Ltd & another v Morris NO 1988 (1) SA 715 (A) at 734D-F. The Court addressed concerns about indefinite extensions by noting that sections 47 and 48 of the Patents Act contain safeguards such as obliging advertisement of applications and protecting the rights of interested parties during intervening periods, and that section 66 restricts recovery of damages for infringement where a defendant was unaware of the patent's existence. The Court expressed the view that fears of applications extending indefinitely were 'more imagined than real'. The Court also noted the general principle from Rossouw & another v Firstrand Bank Ltd [2010] ZASCA 130; 2010 (6) SA 439 (SCA) that it is generally impermissible to use regulations created by a minister as an aid to interpret the intention of the legislature in an Act of Parliament.

This case is significant for establishing the proper relationship between statutory provisions and subordinate regulations in South African patent law. It confirms that the Registrar of Patents has broad discretionary power under section 16(2) of the Patents Act 57 of 1978 to extend time periods either before or after expiry, and that this power cannot be limited by deeming provisions in the Patent Regulations unless the statute expressly provides otherwise. The judgment reinforces important principles of statutory interpretation: that regulations cannot override statutory provisions; that remedial powers should be interpreted broadly; and that the phrase 'otherwise expressly provided' in section 16(2) requires clear and express limitation in the statute itself, not in subordinate regulations. The case provides certainty for patent holders seeking extensions of time and clarifies the limits of regulatory provisions in restricting statutory discretionary powers. It also demonstrates the application of the principle that regulations made by a minister cannot be used to interpret or limit the intention of the legislature as expressed in the parent Act.