De Beers Industrial Diamond Division Ltd v General Electric Co

• Jurisdiction: South Africa
• Judge: Hiemstra AJP, Margo J and McEwan J
• Judgment Date: 24 March 1977
• Court: Transvaal Provincial Division
• Hearing Date: 23 February 1977

Margo, J.:

In the court of the Commissioner of Patents the H appellant applied under sec. 43 of the Patents Act, 37 of 1952, for an order revoking South African patent No. R61/1151 and for certain other relief. The application was opposed by the respondent, in whose name the patent was registered. The Commissioner (NICHOLAS, J.) made no order on the application and directed the appellant to pay the costs of the application. The present appeal is against that result. There is a cross-appeal by the respondent against the form of the Commissioner's order (which is equivalent to absolution from the instance) on the ground that there should

Margo J

have been a final judgment in favour of the respondent.

The patent, the effective date of the application for which was 3 October 1960, is entitled "Improvement in or Relating to a Polycrystalline Compact of Boron Nitride and Method for its Production". The inventors, who assigned their rights to the A respondent, were Robert Henry Wentorf, Jr., and Anthony Joseph De Lai.

The application for revocation was advanced originally on each of three grounds, viz. (1) that the invention was not new; (2) that the application for the patent contained a material misrepresentation; and (3) that the invention was obvious. The B third ground was not pursued. The second ground depends upon the validity of the first ground, which is, therefore, the only ground requiring consideration.

Sec. 43 (1) of the Patents Act provides for revocation of a patent upon any one or more of the grounds upon which the grant of a patent might have been opposed, and sec. 23 (1) (l) C provides for opposition to the grant of a patent on the ground that the invention was not new at the effective date of the application. Sec. 1 defines "new", in relation to an invention, as meaning, inter alia, that on or before the effective date of the application for a patent in respect thereof, the invention was not described in any publication of which there was a copy in the Republic at the effective date of the application, or in D a publication printed and published elsewhere than in the Republic less than 50 years prior thereto.

The appellant's case on lack of novelty was based upon the alleged anticipation of the patent in the April 1957 issue of The Journal of Chemical Physics. It was not disputed that that journal was printed and published in the U.S.A. at that time, E and that, in any event, a copy thereof was in the library of the University of the Witwatersrand prior to the effective date of the application. The relevant portion of the publication was an article by R. H. Wentorf, Jr...