Bendz Ltd and Another v South African Lead Works Ltd

• Jurisdiction: South Africa
• Citation: 1963 (3) SA 797 (A)

Bendz Ltd and Another v South African Lead Works Ltd
1963 (3) SA 797 (A)

1963 (3) SA p797

Citation	1963 (3) SA 797 (A)
Court	Appellate Division
Judge	Steyn CJ, Beyers JA, Ogilvie Thompson JA, Botha JA and Holmes JA
Heard	May 9, 1963
Judgment	May 28, 1963

Flynote : Sleutelwoorde A

Patent — 'Material misrepresentation' — Meaning of in sec. 23 (1) (i) of Act 37 of 1952 — Such a ground for opposition to the B amendment of a patent — 'Additions to the invention' — Meaning of in sec. 10 (6) of Act — Responsibility for accuracy of application for a patent not shared with Registrar — Misrepresentation in application resulting in applicants obtaining a priority date to which not entitled — Commissioner of Patents C rightly refusing an application for amendment under sec. 37 of Act.

Headnote : Kopnota

Any misrepresentation of fact, contained in an application for a patent, which would, if acted upon by the Registrar, result in the applicant obtaining something to which he is not entitled in terms of the Act, is a material misrepresentation for the purposes of section 23 (1) (i) of the Patents Act, 37 of 1952. In terms of that section it is a ground of D opposition to the grant and, in terms of section 43 (1), for the revocation of a patent if 'the application contains a material misrepresentation'. It is therefore also a ground upon which an application for the amendment of a patent can be opposed. No purpose could, in any event, be served by amending a patent which would even after amendment be subject to revocation.

The expression 'additions to the invention' in section 10 (6) of the Patents Act, 37 of 1952, only refers, subject to the provisions of E sections 10 (4) and 27, to additions made to the declared invention by subsequent discovery, though not by development thereof.

The responsibility for the accuracy of a declaration in an application for a patent rests fairly and squarely upon the applicant, who cannot escape the consequences of a misrepresentation in his declaration merely on the ground that the effect thereof could have been negatived by the Registrar in the performance of his statutory duties.

An action for the infringement of its South African patent relating to a F method of producing duct members and drain traps, instituted by the appellants against the respondent, had been suspended to allow the appellants to apply to the Commissioner of Patents, in terms of section 37 of Act 37 of 1952, for the amendment of their complete specification. Appellants' application had been dismissed by the Commissioner on the ground that its application, from which the patent had matured, had contained a material misrepresentation. In an appeal, by consent of the G parties, direct to the Appellate Division, that Court found that the misrepresentation relied upon by the respondent had been established and that the Registrar had acted upon it with the result that the appellants had obtained a patent with a priority. date to which they were not, in terms of section 95 of the Act, entitled, and that even if the amendments had been allowed, the appellants' patent would still have been subject to revocation on the ground of the alleged misrepresentation in the appellants' prior application.

Held, that in these circumstances the Commissioner had had no H alternative but to dismiss the appellants' application for the amendment of their patent. Appeal accordingly dismissed.

Case Information

Appeal from a decision of the Commissioner of Patents. The facts appear from the judgment of BOTHA, J.A.

W. H. R. Schreiner, for the appellants: As to the meaning of the word 'application' in sec. 23 (1) (i) of Act 37 of 1952, in secs. 9, 10, 11 and 12, the word is used to describe the form as distinct from

1963 (3) SA p798

the documents which must accompany the form in order that the application should be granted. A similar distinction is drawn in sec. 15. The distinction is not made in sec. 13 where it is clear that the word 'application' refers to all the documents which are required to be A lodged in order to constitute a proper request for the grant of the patent. A similar meaning should be given to the word as used in sec. 23 (1) (i), and any material misrepresentation resulting from a reading of the form itself and the accompanying documents is a ground for opposing the grant of a patent or for revocation of a patent already granted. If B this were not so there would be no ground upon which certain types of false statements in the specifications could be a ground of invalidity. As distinct from most of the other sections, sec. 23 (1) (i) is not dealing with the procedure to be followed in making an application but with that stage in the procedure leading up to the grant which is properly termed 'the application'; see Petition of Kromschroeder (G.A.G.), 1960 R.P.C. at p. 179. If only the application C form falls to be considered, the question of whether or not there was a misrepresentation must be decided upon a construction of that document only, but whether or not it was material depends upon the circumstances surrounding the making of the application, including the D contents of other documents submitted to the Registrar for examination or consideration. If all the documents which must be filed are a part of the 'application', there would be no misrepresentation in that the documents were intended to be read as a whole and the wording of the application must be read in the light of the accompanying documents which may make it clear that a priority in respect only of the matters E contained in the specified foreign application was intended. Alternatively, if, in the context, there was a misrepresentation, the question again arises as to its materiality. The word 'developments' (Afrikaans 'ontwikkelings') in sec. 10 (6) may suggest something which was discovered after the original discovery which formed the subject F matter of the foreign application (though not necessarily something which was discovered after the foreign application was made). The word 'additions' (Afrikaans 'byvoegings') in sec. 10 (6) must mean something which is not a 'development'. It covers subject-matter which forms a natural part of, or is conveniently associated with, the subject-matter of the foreign application whenever it may have been discovered. As the G developments or additions referred to in the section must be such that, standing by themselves, they would constitute subject-matter for a separate patent, they, in a sense, must be separate 'inventions'. Thus, unless the word 'invention' in secs. 10 (4) and 27, falls to be construed broadly, this would seem to be a case where the provisions of H these sections have no application; see secs. 10 (4), 27; Power Construction Consolidated Ltd v African Batignolles Consolidated Ltd., 1955 (4) SA at pp. 227 - 8; British United Shoe Machinery Co., Ltd v Fussell (A) & Sons, Ltd., 25 R.P.C. at p. 651. By virtue of sec. 10 (6), the specification may contain matter which has the priority date of the application in a convention country and also matter which a the priority date of the filing of the complete specification. As to misrepresentation, the words 'relevant invention' (Afrikaans 'betrokke uitvinding') in the application form 1A refer

1963 (3) SA p799

to the application made in a foreign country particulars of which are set out in that form, and not to any other application which might cover other matter referred to in the South African specification for which no priority date apart from that of the complete specification is claimed. A Such applications are 'irrelevant' in the sense that no priority is claimed in respect of them. Being secret until granted, nothing turns. upon them so far as the validity of the patent is concerned. The prayer for a priority claim of the 23rd May, 1952, at the end of form 1A, is not a representation but merely a request for Letters Patent with a B certain date, the date upon which portions of the specification are entitled to the priority. Therefore, there is, in fact, no misrepresentation in the application form itself. If the word 'invention' in the application form refers merely to the idea which, when put into concrete terms, entitles an application to a patent, there is no misrepresentation in the form. Alternatively, if the application form and the complete specification fall to be read together, any inaccuracy C in the form is covered by reading the priority document which clearly refers only to the process of manufacturing a specific type of duct member, As to the materiality of the misrepresentation, the application is addressed to the Registrar of Patents who is under a statutory obligation to examine both the form and the other documents D filed. This would include the foreign application; see Patent Rules, Rule 12. The misrepresentation must be material in the sense that it is likely to, or would in the ordinary course, mislead the Registrar in the carrying out of his duties; see R v Milne and Erleigh (2), 1950 (4) SA at pp. 597 - 8; Ex parte Berson, 1938 W.L.D. at p. 113. It must be E assumed that the Registrar would carry out the duties imposed upon him by statute and that he has always been aware of sec. 10 (6) whereby matter not contained in the application in the foreign country could be included in the South African complete specification. Therefore any possible misrepresentation in the application form cannot be material F because, if the Registrar has carried out his statutory obligations, the position would have been immediately apparent to him, namely, that priority was asked for only in respect of those claims which fell within the new disclosures of the specified prior British application No. 13,069. As to the Commissioner's judgment, his statement that compliance with sec. 95 and making use of the...