Alcatraz Intergrated Intelligent Systems (Pty) Ltd v Intergra-Set (Pty) Ltd

• Jurisdiction: South Africa
• Judge: Makgoka J
• Judgment Date: 08 October 2010
• Docket Number: 4260/2005
• Court: Commissioner of Patents
• Hearing Date: 10 May 2010
• Citation: 2010 JDR 1203 (CP)

Makgoka, J:

[1]

This judgment turns of the principle of res judicata. The applicant launched an application in terms of section 61 (1) (c) of the Patents Act 51 of 1978 (the Act). The applicant seeks revocation of the patentee's patent number 4260/2005 titled "security system" (the patent). The revocation is sought on two grounds.

[2]

First, that the invention of the patent is not patentable under section 25 of the Act, in that it was not new immediately before its priority date of the state of the art as made available to the public. Second, that the patent did not involve an inventive step and would have been obvious to a person skilled in the art having regard to the matter which formed part of the state of the art immediately prior to the priority date.

[3]

The parties are competitors, involved in the installation of security, perimeter and access control systems which includes the erection of electric fencing. For convenience, I shall in this judgment refer to the patentee as the respondent.

[5]

A preliminary point of res judicata was raised by the respondent. I deem it prudent to consider that point at this stage. The brief factual background giving rise to this point is set out below.

2010 JDR 1203 p3

Makgoka, J

[6]

On 28 September 2006 the applicant commenced proceedings for the revocation of the patent on the grounds of lack of novelty and lack of inventive step. In those proceedings, the applicant was identified as Alcatraz Integrated Systems (Pty) Ltd and the respondent as Automated Identification Technologies (Pty) Ltd. An application was made during those proceedings to substitute the present respondent, as the patent had been assigned to the present respondent. Nothing, however, turns on these apparent discrepancies.

[7]

The revocation application come before Southwood J on 15 August 2008 and judgment was delivered on 25 August 2008. It is the effect of the judgment of Southwood J that forms the basis of the res judicata point raised by the respondent.

[8]

The events that preceded the judgment Southwood J are the following: In its statement of particulars, the applicant alleged that the state of the art consisted of-

(a)

PCT- Patent Application Number W099/36647 published on 22 July 1999;

2010 JDR 1203 p4

Makgoka, J

(b)

an electrified palisade split fence that was installed a Investec Head Office, 100 Grayston Drive, Sandton in 1997;

(c)

an article titled "The Eskom route to safety" that was published in Eskom News in July 2003; and

(d)

South African Patent number 2002/6992 in the name of Automated Technologies (Pty) Ltd.

[9]

On 8 January 2008 the applicant amended its statement of particulars to include the prior to include the prior art consisting of-

(a)

an electrified palisade split fence, as built, that was installed at the Eskom Brits Industrial site in Brits, North West province in 2003;

(b)

Use of the electrified palisade split fence referred to in paragraph (a) above, by Eskom prior to 26 January 2005.

[10]

There was no objection to the amendment. However, the amendment was only introduced after the then respondent had filed its answering affidavit. Consequently it was not dealt with by the then respondent in its answering affidavit. The applicant dealt with that newly introduced prior art in its replying affidavit, which was served and filed out of time. Condonation for the late delivery of the replying affidavit was

2010 JDR 1203 p5

Makgoka, J

sought but opposed by the respondent. Southwood J refused the condonation application and decided the matter on the evidence contained in the founding and answering affidavits. The application for revocation was subsequently dismissed.

[11]

It is against this background that it is contended by Mr. Bowman SC, on behalf of the respondent, that the issue of the validity of the patent in suit is res judicata as the applicant had applied for the revocation of the patent on the same grounds, namely that the patent was not new as it formed part of the state of the art immediately before its priority date and did not involve an inventive step, which issue, so is the contention, had been decided by Southwood J.

[12]

On the other hand, Mr van der Westhuizen SC, on behalf of the applicant, submitted three grounds upon which it was argued that the defence of res judicata was flawed. First, that Southwood J in the previous application only considered the issue of novelty in respect of one specific prior art, namely the article appearing in the Eskom News of July 2003. Second, that the court did not consider nor adjudicate upon additional prior art that was dealt with in the...