Amalgamated Packaging Industries Ltd v Hutt and Another

• Jurisdiction: South Africa
• Court: Appellate Division
• Judge: Wessels JA, Trollip JA, Rabie JA, Corbett JA and Galgut AJA
• Judgment Date: 23 September 1975
• Citation: 1975 (4) SA 943 (A)
• Hearing Date: 04 September 1975

Amalgamated Packaging Industries Ltd v Hutt and Another
1975 (4) SA 943 (A)

1975 (4) SA p943

Citation	1975 (4) SA 943 (A)
Court	Appellate Division
Judge	Wessels JA, Trollip JA, Rabie JA, Corbett JA and Galgut AJA
Heard	September 4, 1975
Judgment	September 23, 1975

Flynote : Sleutelwoorde

Patent — Patents Act, 37 of 1952 — Sec. 36 (3) — Scope of — Applies only to amendments to an accepted complete specification — Sec. 15 (2) — Discretion of Registrar thereunder as to whether or not to order post-dating — Statute — Construction of — "May" used to mean what F it says and not inappropriately used to mean "shall" in sec. 15 (2) of Act 37 of 1952 — Proper construction of a statute cannot be influenced by administrative difficulties in carrying it out after enactment.

Headnote : Kopnota

Despite the words "no amendment of any specification shall be G allowed" in section 36 (3) of the Patents Act, 37 of 1952, section 36 (3) applies only to amendments to an accepted complete specification.

In section 15 (2) of the Act it cannot be inferred that the word "may" was inappropriately used when "shall" was really intended. The Registrar was endowed under section 15 (2) with a discretion to determine in the particular circumstances of each case whether or not the patent application ought to be post-dated to the date of an amendment to the specification.

The proper construction of a statute cannot be influenced by administrative difficulties in carrying it out after its enactment.

A decision of the Registrar of Patents to grant an amendment to a specification without directing that the patent application be post-dated is therefore not a nullity as being contrary to section 15 (2) or 36 of the Act.

Semble: If it had been, the Commissioner, under section 77 (1) of the Act, could probably have declared it null and void and/or set it aside and ordered rectification of the register accordingly under section 73.

The decision in the Transvaal Provincial Division in Amalgamated Packaging Industries Ltd. v Hutt and Another, confirmed.

1975 (4) SA p944

Case Information

Appeal from a decision in the Transvaal Provincial Division (BEKKER, J., TRENGOVE, J., and BOTHA, J.) upholding the decision of the Commissioner of Patents. The facts appear from the judgment of TROLLIP, J.A.

C. Plewman, S.C. (with him R. Grbich), for the appellant: The A words "any specification" in sec. 36 (3) of Act 37 of 1952 cover both accepted and unaccepted specifications. The effect of the amendments applied for was clearly to introduce claims which were not wholly within the scope of existing claims, and to add to the body of the specification matter which was not in substance disclosed in the unamended specification. In so B far as the claims are concerned, three new claims were introduced. In so far as the body of the specification is concerned, a whole new section has been added. Sec. 10 (4) provides that the claims of a complete specification must be fairly based on matter disclosed in the specification. While it would now be possible to frame a claim to the use of this material in compliance with sec. 10 (4), on the unamended C specification any such claim would clearly not have been "fairly based". The only circumstances in which such an amendment is permissible, is where the application is postdated in terms of sec. 15 (2) of the Act. The word "may" in the above section does not merely confer a jurisdiction, it creates a power coupled with a duty to apply the provisions to proper D cases. Cf. Commissioner for Inland Revenue v I. H. B. King; Commisssioner for Inland Revenue v A. H. King, 1947 (2) SA at pp. 209, 210; Julius v The Bishop of Oxford, 5 A.C. 214; Noble and Barbour v The South African Railways, 1922 AD at p. 540. Secs. 36 (1) and (3) and sec. 15 must be viewed in the light of the purpose and scheme of the Act as a whole. Jaga v Dönges, N.O. and Another, 1950 (4) SA at p. 662H. In terms of E sec. 9 (5) of the Act, an application for a patent must be accompanied by a provisional specification or by a complete specification, and it is to date from the day when it is received at the Patent Office. In terms of sec. 1 (iv) (c), this date becomes the "effective date" of the application. As such it is fundamental to all further proceedings in terms of the Act relevant to the validity of the patent. Cf. sec. 23 (1) F (d), read with secs. 43 (1) and 53 (b). An unqualified allowance of such amendments would enable (and in the present case has enabled) the patentee to obtain an effective date earlier than that which should properly have been accorded the application. This can (and in the present case will) seriously prejudice the public. It was improper or irregular to allow the G applicant to introduce into his specification or his claims matter which he may have discovered or thought of after the effective date while retaining his earlier priority, and, inasmuch as the second respondent had no power to allow the amendment unqualified as to date, his decision to do so is a nullity. The entry required by sec. 6 (1) (b) reflecting such amendment must accordingly render the register liable to correction. The learned Commissioner took the H view that sec. 6 (1) simply required the Registrar to record the fact of the amendment in the register. This takes too narrow a view of the section. The Registrar is empowered and required by the Act to make entries in the register but in so doing he must act in accordance with the other provisions of the Act and consistently with other duties imposed upon him. The Registrar, if he acts contrary to law, cannot validly create a right or make an entry in the register reflecting such right. R. v Lewinsohn, 1922 T.P.D. at p. 370; Howard v Bodington, (1877) 2 P.D. 203. Cf. Steyn, Die Uitleg van Wette, 4th ed., p. 204. Sec. 77 of the Act provides that no tribunal other than the Commissioner

1975 (4) SA p945

shall have jurisdiction in the first instance to hear and determine any action or proceedings, other than criminal proceedings, relating to any matter under the Act. If the act of the Registrar (allowing the amendments) is a nullity, the register incorrectly reflects the application in the amended form and subject to the original priority date and must be A rectified. The appellant sought a rectification of the register. Whether the Commissioner, in rectifying the register would be exercising power akin to the power of a Court on review is an irrelevant consideration. The Commissioner held that the power to rectify the register did not imply a power to go behind the grant in order to enquire into the question of B whether it was properly made. If this were so, the provisions of sec. 73 would be meaningless. Ransburg Electro Coating Corporation v Jay Products Ltd., 1967 (3) SA 492.

H. J. Preiss, S.C. (with him N. A. Brathwaite), for the respondent: The court of the Commissioner is a statutory court, exercising such powers as are conferred upon it by statute. No power to review vests in the Commissioner unless specifically C conferred by the Act. Cf. L & B Holdings (Pty.) Ltd. v Mashonaland Rent Appeal Board and Others, 1959 (3) SA at pp. 468H - 469A; Hager and Others v Windhoek Municipal Council, 1961 (3) SA at p. 812G; Steyn, Uitleg van Wette, 4th ed., p. 210. The power to review does not arise from sec. 76 of Act 37 of 1952. The eiusdem generis rule is of application here. D Steyn, Uitleg van Wette, 4th ed., p. 30; Director of Education, Transvaal v McCagie and Others, 1918 AD at p. 623; R. v Nolte, 1928 AD at p. 382. Nor can review powers be read into the latter portion of sec. 76 (1). Sec. 77 (1) does not provide a platform for review powers. The appellant attempted, unsuccessfully, in the previous hearings, to rely upon the provisions of sec. 73, which deals with rectification E of the register. What the Registrar recorded in the present amendment proceedings was an accurate minute of what took place before him. This fact, alone, distinguishes the present from the case of Ransburg Electrocoating Corporation v Jay Products Ltd., 1967 (3) SA at pp. 492E - F. Further, any right to relief by way of review is barred by lapse of time and undue delay. Cf. Hassan & Co. v Potchefstroom Municipality, 1928 F T.P.D. at pp. 827 - 8; Chesterfield House v Administrator of Transvaal, 1951 (4) SA at pp. 424D - 425B; Silbert v City of Cape Town, 1952 (2) SA at p. 119C - D; Shepherd v Mossel...