Colgate-Palmolive Co v Unilever Ltd
Jurisdiction | South Africa |
Judge | Eloff J, Gordon J and Ackermann J |
Judgment Date | 14 June 1983 |
Court | Transvaal Provincial Division |
Hearing Date | 28 April 1983 |
Citation | 1983 (4) SA 249 (T) |
Ackermann J:
This is an appeal from a judgment of NICHOLAS J, sitting as Commissioner of Patents, in which he refused an application by the appellant under s 36 (4) of the Patents Act 37 of 1952 for the amendment of SA patent application 73/2429 dated 4 March 1973. The application has been accepted but a F patent has not yet been granted. I shall refer to appellant as "applicant" and to the respondent as the "objector".
The history of the present dispute and the issues that are involved are set forth comprehensively and clearly in the judgment of the Commissioner and I shall only refer to so much G thereof as is necessary to understand the issues raised on appeal. I make no excuse for borrowing liberally from this judgment.
The invention is stated in the specification to relate to "scouring cleanser composition" and it is said to provide
"scouring cleanser compositions containing an effective scouring material which does not readily scratch metal surfaces H such as aluminium and stainless steel".
The relevant portions of the specifications are set forth in the judgment of the Court a quo and I would merely point out two features thereof. Firstly, that
"the substance employed as the scouring material comes within the broad classification calcite".
Secondly, that, although calcite comes from various sources,
"of particular interest are those sedimentary deposits, originally of fine grain size, which have suffered only minor recrystallization of their carbonate".
Ackermann J
Notice of opposition to the grant of the patent was given by the objector on 24 February 1975. During the period 1975 to 1978 the applicant filed two successive applications for the amendment of the specifications, but both were withdrawn. A Thereafter the present application was filed. In terms of the present application it is sought to amend claim 1 so as to read:
A scouring cleanser composition containing as a scouring material in an amount of from 50 to 99,4 per cent by weight of the composition, a substance containing calcium ions and carbonate ions and crystallizing in the hexagonal-scalenohedral division of the crystal systems of minerals, said substance (a) having one axis of three-fold B symmetry reflecting a regular distribution of triangular carbonate ions interleaved with and equidistant from layers of calcium ions in planes perpendicular to this axis (b) being calcite crystals from a sedimentary deposit, originally of fine grain size and which has suffered only minor recrystallization of its carbonate, having a rhombohedron habit and (c) having a particle size in the C range from 10 to 50 microns."
(The words italicised are the words which it is proposed to insert in the existing claim 1.) There are related amendments to the body of the specification.
On 22 May 1979 the objector gave notice of opposition to the proposed amendment "for the reasons that a patent granted on the specifications as amended would be invalid". The statement D of particulars reads:
"The proposed amended claims do not sufficiently and clearly define the subject-matter for which protection is claimed, and a patent granted upon the amended specification would be invalid because an addressee could not tell what would be included in, and excluded from, claim 1 by the phrase 'calcite crystals from a sedimentary deposit, originally of fine grain E size, and which has suffered only minor recrystallization of its carbonate'."
The ground of invalidity relied on by the objector is that contained in para (g) of s 23 (1) of Act 37 of 1952:
"that the claims of the complete specification do not sufficiently and clearly define the subject-matter for which protection is claimed".
The words "sufficiently and clearly" relate to the requirements F of s 10 (3) (c) (a complete specification shall "end with a claim or claims defining the subject-matter for which protection is claimed") and (4) ("a claim or claims of a complete specification shall be clear and distinct").
After considering the law and the evidence on affidavit the Commissioner came to the conclusion that the case of the G objector had been clearly established and refused the application for amendment with costs. It is against this refusal that the present appeal is brought.
The patentee's duty to ensure, in terms of s 10 (4) of the Act, that the claim is "clear and distinct" has been referred to in numerous cases decided in England and in South Africa, H including Natural Colour Kinematograph Co Ltd v Bioschemes Ltd (Smiths' Patent) 32 RPC 256 at 266; Electrical & Musical Industries v Lissen 56 RPC 23 at 39; Pathe Cinema Societe Anonyme v Coronet Camera Company [1939] 57 RPC 4 (Ch) at 59; Martin and Biro Swan Ltd v H Millwood Ltd 71 RPC 458 (CA) at 460 and Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A) at 249. The relevant passages are quoted in the judgment of the Commissioner, which I would attempt to collate and summarise as follows:
Ackermann J
The function of the claim is to inform prospective rivals of the limits of the field denied to them while the patent lasts, ie the monopoly must be defined. The manufacturer desiring to make a particular article to satisfy a public need must be able A from a reasonable reading of the specification to ascertain clearly what he may do and what he may not do. To this end the patentee must clearly, distinctly and with precision, either by direct words or by clear and distinct reference, state the nature and limits of what he claims so that others may know the exact boundaries of the area within which they will be B trespassers. In a passage quoted with approval in the Letraset case supra at 249G - H GALGUT J in Transvaal and Orange Free State Chamber of Mines v Hukki 1964 (2) SA 518 (T) at 532G stated the following:
"The public who use this art, the persons trained in the art, should not be left to hazard any guess as to what the forbidden field is."
C The following remarks of Lord RUSSELL OF KILLOWEN in Electrical & Musical Industries v Lissen (supra at 39) were quoted with approval by VAN DEN HEEVER JA in Power Steel Construction Co (Pty) Ltd v African Batignolles Constructions (Pty) Ltd 1955 (4) SA 215 (A) at 224F:
"A claim is a portion of the specification which fulfils a separate and distinct function. It, and it alone, defines the monopoly; and the patentee is under a statutory obligation to state in the claims clearly and distinctly what is the D invention which he desires to protect."
Mr Osborne, who together with Mr Puckrin appeared for the applicant, stressed however that what was demanded was reasonable and not absolute certainty, as pointed out by NICHOLAS J in Sierputowski v Anglo American Corporation of South Africa Ltd (an unreported judgment dated 18 July 1972 in E the Commissioner's Court) where he said that -
"the degree of sufficiency and clarity of the definition of the subject-matter for which protection is claimed is 'reasonable certainty'".
This ground of objection is referred to either as the objection of "ambiguity" or of "uncertainty of claiming", the latter expression being thought to be preferable.
F It is common cause in the present matter that the onus is on the objector to prove its case on a balance of probability.
The essence of the dispute is whether the definition of a scouring material as contained in the words
"being calcite crystals from a sedimentary deposit, originally G of fine grain size and which has suffered only minor recrystallization of its carbonate"
is sufficiently precise to enable the hypothetical reader of the specification to identify it. Much of the debate on appeal centred round the extent of the expertise and knowledge that such hypothetical reader must be taken to possess. I would therefore preface my reference to the evidence in the case by H considering what test the authorities lay down for determining who the so-called hypothetical reader is.
Blanco White Patents for Inventions 4th ed states in para 4 - 503 at 189 - 190:
"A specification is addressed to the man who must use it: to those who will be responsible for putting it into practice and have the necessary skill for doing so. Even at the beginning of the present century it was recognised that patent specifications were not ordinarily addressed to workmen, nor to amateurs; but it was also then emphasised that the sort of 'expert scientist' who was likely to appear as an expert witness at the trial of an action was altogether
Ackermann J
too knowledgeable and ingenious fairly to represent the addressee. Thus the cases of the period set a level representing skilled technicians rather than graduate scientists; and it was seen that that is still the law, notwithstanding that in these days graduate scientists are habitually employed in the sort of industry where innovations are frequent, and that these scientists are habitually A...
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