21 July 2026

Geobrugg AG v Job SA Engineering and Management (Pty) Ltd and Others (2019/01833; 2019/04718) [2026] ZACCP – full judgment available here

Judge Collis, sitting as the Commissioner of Patents in the Gauteng Division of the High Court, recently handed down judgment concerning two South African patent applications held by Geobrugg AG. The matter dealt with an application for condonation and extension of time for the late publication of advertisements of acceptance, and raised issues relating to the Registrar’s discretion under the Patents Act, 57 of 1978, as well as the requirement to join interested parties.

Background

Geobrugg sought condonation and an ex post facto extension of the three-month period prescribed for the publication of advertisements of acceptance for patent application numbers 2019/01833 and 2019/04718. Following acceptance, the required publication in the Patent Journal occurred outside the prescribed period.

Geobrugg contended that the delays were beyond its control, arising from administrative failures on the part of the Registrar and disruptions caused by the COVID-19 lockdown. It accordingly sought an order from the Commissioner confirming that the granting and sealing of the patents by the Registrar was not invalidated by the late publication of their advertisements of acceptance.

The first and second respondents opposed the application on two bases. First, they argued that Geobrugg had approached the wrong forum, as any extension ought to have been sought from the Registrar in terms of section 42(3) read with Regulation 46. Second, they raised non-joinder, contending that Lichenry Construction (Pty) Ltd, which was involved in parallel infringement proceedings concerning the same patents, had a direct and substantial interest in the matter.

Issues

The Commissioner identified two central issues:

• Whether Geobrugg was entitled to seek condonation directly from the Commissioner, or whether it was required to first apply to the Registrar for an extension under section 42(3), read with section 16(2) of the Act.
• Whether the failure to join Lichenry, as a party with a direct and substantial interest in the validity of the patents, rendered the application defective.

The Registrar’s Discretion

Section 42(3) of the Act, read with Regulation 46, requires that acceptance of a patent application be advertised within three months, failing which the application lapses, unless the Registrar grants an application for an extension on “good cause shown”. Section 16(2), however, empowers the Registrar to extend time periods either before or after expiry, unless expressly excluded.

South African case law has previously drawn a distinction between peremptory and procedural time periods. For example, in University of Pretoria v Registrar of Patents, the Court held that the time period for acceptance under section 40 is peremptory and not capable of extension. By contrast, in Mu Mecanicos Unidos S.A.S. v Registrar of Patents and Buzbee v Registrar of Patents, the Court confirmed that, where the Act does not expressly exclude the discretion provided in section 16(2), the Registrar may extend time periods even after expiry on “good cause shown”.

Against this backdrop, in this judgment the Court accepted that the time period in section 42(3) is not peremptory in the same sense as section 40, and that the Registrar retains a discretion to grant extensions. It follows that this discretion must first be invoked before a party approaches the Court.

Facts of the case

The delays in publication were relatively short. In respect of the first patent application, the advertisement was published only four days after the expiry of the prescribed periodwhen dies non were taken into account. In respect of the second application, the delay arose in the context of the COVID-19 lockdown and, when the COVID-19 dies non are taken into account, was arguably not late.

Notwithstanding this, the Court held that the application before it was premature. Given that the Registrar is empowered to grant extensions under section 16(2), Geobrugg was required to first seek relief from the Registrar.

The court also upheld the respondents’ non-joinder defence. As Lichenry was involved in parallel proceedings in which the validity of the same patents was in issue, any order regarding the timeliness of publication would directly affect its legal position and therefore it ought to have been joined.

Conclusion

The application was dismissed on the grounds of prematurity and non-joinder. This judgment highlights a number of important considerations. First, where the Patents Act provides for the exercise of discretion by the Registrar, that process must be followed before approaching the Court. Secondly, it underscores the distinction in the case law between peremptory and procedural time periods, with the latter remaining subject to extension under section 16(2). Finally, the decision serves as a reminder of the importance of joining all parties with a direct and substantial interest in patent validity disputes, particularly where parallel proceedings are pending.