Elrick v The Registrar Of Patents

• Jurisdiction: South Africa
• Judge: Prinsloo J
• Judgment Date: 04 May 2007
• Docket Number: 2001/5679
• Court: Court of the Commissioner of Patents
• Hearing Date: 04 May 2007
• Citation: 2007 JDR 0315 (CP)

Prinsloo J:

[1]

This application for the amendment of South African patent 2001/5679 in terms of section 51(9) of the Patents Act 57 of 1978 ("the Act") came before me on an opposed basis.

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[2]

Dr. Burrell appeared for the applicants and Mr Bowman SC assisted by Mr Heystek appeared for the second respondent. The first respondent did not take an active part in the proceedings.

BACKGROUND AND SYNOPSIS OF THE UNDERLYING CIRCUMSTANCES

[3]

The first applicant is the inventor and patentee of South African patent no 2001/5679 ("the patent").

[4]

The second applicant is the first applicant's registered exclusive licensee under the patent.

[5]

The invention underlying the patent relates to a pressure pad arrangement for use with a pressure ring segment as used in a ring of the segments around an electrode contact shoe pressure ring in an electrode furnace and more particularly to a seal for attaching an electrode contact shoe pressure pad to the pressure ring segment or to a pressure pad cartridge for use with the segment.

[6]

A contact shoe pressure pad arrangement according to the invention includes a pressure plate, a flexible sheet metal seal which is sealingly attached to the pressure plate to surround the periphery of the plate with the seal at the periphery of the plate being trough shaped, remote from the pressure plate, being sealingly attached to a pressure ring segment over an opening, in the concave inner surface of the segment, into the water cavity of the segment.

In a second form of the invention, the contact shoe pressure pad arrangement includes a pressure plate, a flexible sheet metal

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seal which is sealingly attached to the pressure plate to surround the periphery of the plate with the seal at the periphery of the plate being trough shaped with the upper edge portion of an outer wall of the trough, remote from the pressure plate, being sealingly attached to a pressure pad cartridge, which is releasibly locatable on a pressure ring segment, in use, over an opening into the water cavity in the cartridge.

[7]

In layman's terms it can be said that the invention is employed as part of the operation of a so-called electrode furnace. The furnace consists of a shell which has a roof through which an electrode extends. The furnace shell is charged with a burden which is separated into metal and slag during the working of the furnace. The electrode is consumable and, during use, is slowly fed into the furnace shell. In and below the roof segments or clamps are positioned into the pressure ring around the electrode. This is what the invention is about. The clamps allow for the periodical lengthening of the electrode to compensate for the consumption thereof in the furnace shell. The clamps are tied together in the ring and each clamp has a base with water cavities and the pressure plate. Each pressure plate is hydraulically operated by way of water which flows through the base and presses an electrode contact shoe against the electrode. In combination the pressure plates press against the electrode and prevent the electrode from falling into the furnace shell.

It is this pressure pad arrangement, employed to control the descent of the electrode into the furnace, which features in the invention.

[8]

In January 2003 the applicants, as plaintiffs, instituted an action against the second respondent as defendant.

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[9]

Paragraphs 7 and 8 of the particulars of claim read as follows:

"7.

From a date presently unknown to the plaintiffs, the defendant has made an/or offered to dispose of and/or sold and/or used and/or installed a contact shoe pressure pad arrangement and a seal for sealing a contact shoe pressure pad (hereinafter referred to as "the Infringing Products") in the Republic of South Africa.

8.

The Infringing Products so manufactured and/or disposed of and/or offered to be disposed of and/or sold and/or used and/or installed fall within the scope of claims 1-17 of the patent."

[10]

In the summons the applicants, as plaintiffs, claim an interdict restraining the defendant, (the second respondent) from continuing its alleged infringement of the patent. There are also the usual claims for a damages enquiry, delivery up and costs.

[11]

In June 2003 the second respondent/defendant filed a plea denying the alleged infringement of any of the claims of the patent and a counter claim for revocation of the patent, in terms of section 61 of the act.

[12]

This inspired the applicants to apply to amend the complete specification of the patent. The application to amend is dated 7 November 2003 and the reasons for making the amendment are described as follows:

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"1.

To limit the scope of the claims of the specification in an attempt to avoid any relevant prior art disclosures in ZA89/6033, ZA96/10836, ZA2000/6747 and US4, 577, 325;

2.

To improve the clarity of the claims;

3.

To claim aspects of the invention which are commercially important;

4.

To separate the claims relating to a pressure ring segment from the claims relating to a pressure pad cartridge; and

5.

To add a new set of claims which is a combination of the original claims and is specifically directed at a pressure pad arrangement with an annular dust seal."

[13]

The amendment was opposed by the second respondent.

[14]

When the parties could not agree to stay the action pending the outcome of the amendment, the applicants approached this court for relief, and on 9 December 2003 the following order was made:

"1.

That the action for infringement of, and counter claim for the revocation of, South African Patent no 2001/5679 ("the Patent") between the first and second applicants and the second respondent be stayed pending the outcome of the application for the amendment of the patent.

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2.

That the application for amendment of the patent be advertised by the applicants in the December 2003 issue of the patent journal for a two months opposition period.

3.

That any opposition to the application for amendment of the patent, including the intended opposition thereto by the second respondent, be dealt with in terms of section 51(3)(b) of the Patents Act no 57 of 1978;

4.

No order as to costs in respect of this order;

5.

The costs of any opposition to the application for amendment of the patent are reserved."

[15]

The application for amendment was duly advertised as open to opposition in the South African Patent Journal of December 2003. Notice of opposition to the application to amend was delivered by the second respondent on Form P19 on 26 February 2004, and in a statement of particulars the second respondent raised grounds of opposition under the captions of:

Full reasons

Continued invalidity on the basis of:

Obviousness and lack of novelty

Lack of clarity

Inutility

False statement

Lack of bona fides (undue delay)

Stated object

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FURTHER CHRONOLOGY OF EVENTS WITH SPECIAL REFERENCE TO THE EXCHANGE OF PAPERS

[16]

The applicants delivered a counter statement of 22 April 2004 denying the second respondent's grounds of opposition.

[17]

The second respondent delivered its founding evidence in terms of Patent Regulation 84 in July and December 2004 and, in December 2004, supplementary founding evidence, in the form of affidavits in support of all the grounds of opposition upon which the second respondent relied.

[18]

The applicants, in May 2005, delivered their answering affidavits in terms of Patent Regulation 85 in response to the second respondent's founding evidence and supplementary founding evidence.

[19]

In August 2005, the second respondent applied to amend its statement of particulars of opposition to the present application to amend by adding two further grounds of opposition under the captions of:

Section 62; and

Contravention of section 51(6) and 51(7) of the Act.

This application to amend was unopposed and in September 2005 the second respondent delivered its amended statement of particulars.

[20]

Later in the same month, September 2005, the applicants delivered an amended counter statement.

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[21]

In December 2005 the applicants delivered a supplementary answering affidavit and annexures.

[22]

In May 2006 the second respondent delivered a replying affidavit to both the applicants' answering and supplementary answering affidavits.

[23]

In the result I am faced with four founding affidavits, two answering affidavits and one replying affidavit.

[24]

As a final parting shot in this impressive paper war, the applicants filed an application to strike out on 7 March 2007, only days before the 13th of March 2007 when the hearing before me commenced.

[25]

As a general proposition, it can be stated that, during the course of the paper exchanged, the second respondent abandoned the original grounds of opposition to the proposed amendment and, for purposes of this hearing, relied only on the two grounds, introduced by amendment, supra, flowing from the provisions of section 62 and section 51(6) and 51(7) of the Act.

THE SECTION 62 ARGUMENT

[26]

Section 62 reads as follows:

"A patent shall be granted for one invention only, but no person may in any proceedings object to a patent on the ground that it comprises more than one invention."

[27]

The second respondent argues that the patent, in its proposed amended form, comprises more than one invention.

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[28]

It is convenient to quote the amended "section 62 ground of opposition" offered by the second respondent.

"5.1

Having regard to claims 1-21 as proposed to be amended, the invention relates specifically to a contact shoe pressure pad...