Bendz Ltd and Another v South African Lead Works Ltd

• Jurisdiction: South Africa
• Judge: Steyn CJ, Beyers JA, Ogilvie Thompson JA, Botha JA and Holmes JA
• Judgment Date: 28 May 1963
• Citation: 1963 (3) SA 797 (A)
• Hearing Date: 09 May 1963
• Court: Appellate Division

Botha, J.A.:

An action for infringement of their South African patent No. 17391, granted on application No. 516/53, instituted by the appellants against the respondent, was suspended to allow the appelllants to apply H to the Commissioner of Patents, in terms of sec. 37 of the Patent Act, 37 of 1952, for the amendment of their complete specification. Appellants' application was dismissed with costs by the Commissioner, and they now, by consent of parties, appeal direct to this Court against the Commissioner's decision.

The patent relates both to a method of producing duct members, including drain traps, and to duct members and drain traps produced either by the method claimed, or by some other method. The proposed amendments are designed mainly to limit both the process and the

Botha JA

article claims to drain traps and not to duct members generally.

The respondent opposed the application on several grounds which may be summarised as follows:

(a)

A that there has been undue delay in applying for the amendments; (b) that the appellants, when they applied for certain other amendments in January, 1956, were fully aware of the necessity of the amendments now sought, and should have included them in the application at the time;

(c)

that despite the fact that the appellants had knowledge of the B fact that their claims were too widely drawn and were covetous, they persisted in affirming the validity of their claims, and in threatening action against respondent on the patent, thus acting recklessly or mala fide;

(d)

that appellants' application No. 516/53, from which the patent matured, contained a material misrepresentation.

C The Commissioner dismissed the application on the last-mentioned ground, and did not therefore in his judgment deal with the other grounds of opposition. As it was manifestly impossible to dispose of the appeal on the one day for which it was set down at the instance of the D appellants, only the last-mentioned ground of opposition was, by arrangement between counsel, debated before us on the understanding that, unless the appeal failed on this ground, the other grounds of opposition will be argued at a later stage.

In terms of sec. 23 (1) (i) of the Act, it is a ground of opposition to the grant and, in terms of sec. 43 (1), for the revocation of a patent if 'the application contains a material misrepresentations'. It is E therefore also a ground upon which an application for the amendment of a patent can be opposed. (Willows Francis Pharmaceutical Products Ltd v Aktiebolaget Astra Apotekarnes Kemiska Fabrieker, 1960 (3) SA 726 (AD) at pp. 736 - 738). No purpose can in any event be served by amending a patent which, as will appear later, will even after amendment be subject to revocation.

F It is common cause that appellants' application No. 516/53, dated 13th February, 1953, which mature into South African patent No. 17391, was an application under international arrangements in terms of sec. 95 (1) of the Act, which authorises any person, who has applied for protection for G an invention in a convention country, to apply for a patent for his invention under the Act in priority to other applicants, if application is made therefor within 12 months after the date of the application for protection in the convention country.

The complete specification of patent No. 17391 contains nine process H claims (claims 1 - 8 and 14) relating to a method of producing duct members, and six article claims (claims 9 - 13 and 15) relating to duct members not necessarily produced by the method claimed. The subject matter of the process claims (1 - 8 and 14) was disclosed in the provisional specification accompanying appellants' application No. 13069/52, dated 23rd May, 1952, made by them for protection for their invention in Great Britain, a convention country. The subject matter of the article claims was not disclosed in that application, which was limited to a method of producing duct members, but it is common

Botha JA

cause that the subject matter of all the article claims was disclosed in British application No. 1725/52, dated 22nd January, 1952.

Appellants' South African application No. 516/53, in so far as is relevant to this appeal, reads as follows:

'We . . . are in possession of an invention the title of which is A 'Improvements in or relating to means for connecting pipes and other duct members to each other', that the said Bendz Limited are the assignees of Stanley Ackerman who claims to be the inventor thereof; that an application or applications for protection for the invention or inventions has or have been made in the following country or countries and on the following official date or dates namely:

in Great Britain on the 23rd May, 1952, numbered 13069,

and that the said application or each of the said applications was the B first application in a convention country in respect of the relevant invention by us or by any person from whom we derive title, and that to the best of our knowledge and belief there is no lawful ground of objection to the grant of a patent to us on this application; and we pray that a patent may be granted to us for the invention in priority to other applicants, and that such patent shall have the date 23rd May, 1952.'

C The misrepresentation, relied upon by the respondent in its opposition to the application for amendment, was that the appellants represented in their South African application that they had

'applied for protection of their invention in Great Britain on 23rd May, 1952, under number 13069, and that the said application was the first application in a convention contry in respect of the invention, whereas, to the knowledge of the plaintiffs, the first application in a convention country in respect of the said invention was application No. D 1725/52, lodged in Great Britain by the plaintiffs on 22nd January, 1952, which was more than twelve months prior to the filing date of their Union application'.

The respondent proceeded to allege in its ground of opposition that the substance of the invention, or a substantial number of its features, had at the date of the South African application been disclosed in the said E earlier British application, and would continue to be contained in the South African specification as it would be amended if their application succeeded.

Much argument was addressed to us as to whether the word 'application' in sec. 23 (1) (i) of the Act means the formal application...