Bateman Equipment Ltd and Another v Wren Group (Pty) Ltd
Jurisdiction | South Africa |
Judge | Vivier JA, Grosskopf JA, Harms JA, Scott JA, Melunsky JA |
Judgment Date | 29 November 1999 |
Citation | 2000 (1) SA 649 (SCA) |
Docket Number | 480/97 |
Hearing Date | 15 November 1999 |
Counsel | LG Bowman (with him JN Cullabine) for the appellant MM Jansen (with him B Du Plessis) for the respondent. |
Court | Supreme Court of Appeal |
Harms JA : H
[1] The registered proprietor (the patentee) of patent 93/6167 instituted infringement proceedings against the appellants in the Court of the Commissioner of Patents. In response, the appellants filed a counterclaim for the revocation of the patent alleging its invalidity I because of a lack of novelty, obviousness and a lack of clarity. Attempting to avoid the possible consequences of the counterclaim, the patentee (the present respondent) applied for an amendment of the specification in terms of s 51(9) of the Patents Act 57 of 1978. It provides that, where proceedings relating to a patent are pending in a Court, any application for the amendment of the specification has to be made to that Court. Mynhardt J
Harms JA
J, sitting as Commissioner, A granted the application in spite of the wide-ranging objections to the amendment. The appeal is before us with his leave.
[2] On appeal, the number of objections to the amendment persisted in were substantially less than in the Court below. Three matters remain in contention: whether the main reason given for the amendment to the B former claims 1 and 7 amounted to 'full reasons' (s 51(1)), whether these claims in their amended form lack a fair basis in the specification (s 51(6)(b)) and whether certain terms in the amended claims are unclear and would render them invalid and subject to revocation (s 61(1)(f)(i)). C
[3] The Court below and counsel before us assumed that the statutory requirement in s 51(1) of furnishing 'full reasons' for a proposed amendment applies to an application which is not governed by that provision but by ss (9). There is no basis for the assumption. Section 51(1) deals with applications for amendment directed to the Registrar D of Patents and in terms requires 'full reasons'. (See, in general, the discussion of the matter in Kimberly-Clark of SA (Pty) Ltd (formerly Carlton Paper of SA (Pty) Ltd) v Proctor & Gamble SA (Pty) Ltd 1998 (4) SA 1 (SCA).) The same or a similar requirement is not contained in ss (9). There may be a valid reason for the distinction. If during the course of litigation concerning the patent an application E for amendment is made, the Court usually is aware of the reasons for the amendment. To require in those circumstances a setting out of full reasons could be unnecessary and formalistic. This does not mean that, depending upon the circumstances of any particular case, the Court should not be informed of the patentee's reasons or that the reasons F should not be full (cf De Beers Industrial Diamond Division (Pty) Ltd v General Electric Company 1988 (4) SA 886 (A) at 895G - J). Nevertheless, the difference between the two cases has material legal consequences: under ss (1) 'full reasons' are jurisdictional facts; under ss (9) reasons are not a jurisdictional requirement and a failure to give sufficient reasons can at most be a G factor which a Court may take into account in the exercise of its discretion to refuse an amendment which is otherwise in accordance with ss (9). In this instance, the onus is on the objector to make out a case that the paucity of reasons is such that the Court should exercise its discretion against the patentee. H
[4] The inventor and managing director of the patentee, Mr Batson, explained in the founding affidavit that, upon the receipt of the counterclaim, he engaged the services of another firm of attorneys, namely the patent attorneys who had drafted the original specification, to take over the conduct of the litigation. This firm advised him that I a Court could find the patent invalid. Whilst still believing in its validity, he decided to apply for the amendment 'with the intention of removing any invalidity from the patent specification, if it exists, and strengthening the patent by limiting the claims to commercial practical embodiments and deleting unnecessary matter'. The main reason for the amendment to claims 1 and 7, he said, was to ensure that they were clearly distinguishable over J
Harms JA
the prior art. (The appellants' A attack is limited to the sufficiency of this reason and the subsidiary reasons dealing with specific words and phrases do not require further consideration.) Batson attached a list of all prior art documents of which he had become aware but added that he did not believe that any were relevant, although one cited by the appellants 'could be considered relevant'. B
[5] The appellant's argument was based upon a statement - in the context of 'full reasons' in s 51(1) - by McCreath J. Speaking on behalf of a Full Court in Proctor & Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and Another 1997 (3) SA 292 (T) (1996 BP 470), he said that 'sufficient information should be given to C enable prospective objectors and the Registrar to be properly apprised of the real reasons for the amendment' (at 297G - H (SA) and 480D - F (BP)). This meant, so the argument went, that it was incumbent upon the patentee to identify that which he accepts forms part of the prior art and which necessitates the amendment because without the identification D of the prior art potential objectors will not know whether the patentee has achieved the object of the amendment.
[6] McCreath J's judgment was overruled on appeal (in Kimberly-Clark) and the substance of the quoted statement was not accepted as correct because it does not reflect realistically E the basis of opposition to patent amendments (ibid at 13A - D). Whether the patentee has failed in achieving its object is for the objector to establish (cf Water Renovation (Pty) Ltd v Gold Fields of SA Ltd 1994 (2) SA 588 (A) (1993 BP 493) at 594C - D (SA) and 502E - F (BP)) and I know of no reason why the patentee should F assist the objector in finding fault with the amended specification.
[7] The nature and object of amendment proceedings must be seen in the context of our patent system as a whole. Ours is a non-examining country and an alleged inventor is entitled to a patent for his supposed invention without having to satisfy anyone of its merit or G validity. He does not have to give any reasons for his choice of wording. Should he sue for infringement, he has no duty to assist the alleged infringer in establishing whether his monopoly is valid or not. Why should he be saddled with a burden if he wishes to reduce the scope of his protection in an attempt to render the patent valid, while in H obtaining or enforcing a monopoly he bears no similar burden? As much as it is in the public interest that persons with inventive minds should be encouraged to give the results of their efforts to the public in exchange for the grant of a patent (cf Miller v Boxes & Shooks (Pty) Ltd 1945 AD 561 at 568 and 578), it is in the public...
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