Herholdt v Registrateur van Patente

• Jurisdiction: South Africa

Herholdt v Registrateur van Patente
1961 (1) SA 133 (A)

1961 (1) SA p133

Citation	1961 (1) SA 133 (A)
Court	Appèlafdeling
Judge	Steyn HR, Schreiner AR, Ogilvie Thompson AR, Botha Wn AR en Van Winsen Wn AR
Heard	November 1, 1960
Judgment	November 10, 1960

Flynote : Sleutelwoorde A

Patent — Plantpatent — Aansoek om — Mag ingehandig word vergesel van slegs 'n voorlopige spesifikasie — Regulasie wat 'n volledige spesifikasie eis is ultra vires art. 9 (5) met art. 16 (1) gelees van Wet 37 van 1952.

Headnote : Kopnota

B Regulasie 13 (2) (a) van die regulasies wat onder Goewermentskennisgewing 2650 van 17 November 1952 kragtens artikel 94 van die Wet op Patente, 37 van 1952, afgekondig is en wat as volg lees, 'die aansoek om 'n plantpatent moet in die eerste instansie vergesel gaan van 'n volledige spesifikasie', is ongeldig uit hoofde van onbestaanbaarheid met artikel 9 (5) gelees met artikel 16 (1) van Wet 37 C van 1952 wat bepaal dat sodanige aansoek vergesel van slegs 'n voorlopige spesifikasie ingehandig mag word.

Flynote : Sleutelwoorde

Patent — Plant patent — Application for — May be sent in accompanied by only a provisional specification — Regulation requiring a full specification ultra vires sec . 9 (5) read with sec. 16 (1) of Act 37 of 1952.

Headnote : Kopnota

Section 13 (2) (a) of the regulations published in Government Notice 2650 of 17th November, 1952 under section 94 of the Patents Act, 37 of 1952, which reads as follows, 'the application for a plant patent must be accompanied in the first instance by a full specification', is invalid on the ground that it is irreconcilable with section 9 (5) of the Act read with section 16 (1), which provides that such application may be sent in accompanied by only a provisional specification.

Case Information

Appèl teen 'n beslissing van die Kommissaris van Patente ingevolge art. 79 (4) van Wet 37 van 1952. Die feite blyk uit die uitspraak van STEYN, H.R. D

H. J. O. van Heerden, namens die appellant: Rule 13 (2) (a) of the Patents Rules is ultra vires, either (a) because it is inconsistent with Act 37 of 1952, and the Governor-General is not empowered by the enabling section to abolish provisional protection as far as applications for plant patents are concerned, or (b) because the rule is unreasonable. Rule 13 (2) (a) is in its terms in direct conflict with E sec. 9 (5) of the Act. Sec. 9 (5) clearly gives an applicant an election to accompany his application with either a provisional or a complete specification; see R v S. E. Rly., Co., 1853 H.L.C. 471; Terrel and Shelly, Law of Patents (8th ed., p. 114). Apart from this fact the whole tenour of the Act leads to the conclusion that either a provisional or a complete specification may be filed at the option of F the applicant; see secs. 10 (8), 14 (1), 16 (1), 28 (1), 29, 30 (1), 36 (1). The rule moreover to a considerable extent deprives an applicant for a plant patent of the advantageous provisional protection conferred by sec. 20 (1), and, in effect, affects a substantive right of such an applicant in that the term of his monopoly may be shortened by twelve to G thirteen months; see secs. 20 (1), 10 (8) and 28 (1). In this connection the Commissioner erred in relying on sec. 9 (5), as the 'effective date' is not the date from which the term of a patent runs. A regulation framed in terms of a enabling section of an Act is invalid if it is inconsistent with the provisions of the Act, or if the scope goes H beyond the powers

1961 (1) SA p134

conferred in such section; see Polyfoto (International) Ltd v Registrar of Patents, 1949 (3) SA 121; African & European Investment Co. Ltd v Warren and Others, 1924 AD at pp. 359 - 60; Naik v Pieter-maritzburg Licensing Officer, 1915 N.L.R. 598; Craies Statute Law (5th ed., p. 301). Not only is rule 13 (2) (a) inconsistent with the Act A but also sec. 94 does not empower the Governor-General to frame a regulation abolishing applications for plant patents accompanied by provisional specifications (and also abolishing, to a substantial degree, provisional protection as far as such applications are concerned). Sec. 94 (1) (a to f) deals with procedural matters. Although B sub-sec. (1) (g) empowers the Governor-General in general terms to make regulations prescribing special requirements in connection with applications for plant patents, the 'requirements' enumerated are, in effect, procedural requirements, and on the strength of the ejusdem generis rule, the said sub-section should thus be construed as C conferring a power to make regulations prescribing 'special procedural requirements'. By the same token the words 'other matters' should be restricted to 'other procedural matters'; cf. R v Ndhlovu, 1949 (3) SA 287. Although rule 13 (2) (a) is procedural in form, it affects, as has already been pointed out, the substantive rights of an applicant, viz. the term of the provisional protection conferred by sec. D 20 (1) as well as the term of his patent monopoly. The word 'applications' in the said sub-section must moreover be given the meaning it bears in the Act i.e. either applications accompanied by provisional specifications or applications accompanied by complete specifications. It has been authoratively decided that a power to E 'regulate' presupposes the continued existence of that which is to be regulated; see Municipal Corporation of the City of Toronto v Virgo, 1896 A.C. 88; Rossi v Edinburgh Corporation, 1905 A.C. 21; R v Williams, 1914 AD 460; R v Mafutsani and Another, 1936 T.P.D. 18; Feinstein v Baleta, 1930 AD at p. 333; Slambe v Johannesburg City Council, 1951 (4) SA 91. By analogy a power to prescribe special F requirements in connection with an application, implies the continued existence of the possibility of applying. Therefore, although the Governor-General has power to prescribe requirements in connection with an application accompanied by a provisional specification, he has no power to abolish such an application. As to appellant's second G contention that the rule in question is unreasonable, this contention is based on the doctrine that an enabling Act must not be construed so as to confer the power to do unreasonable things unless such power is specifically given; see Minister of Posts & Telegraphs v Rasool 1934 AD 167; Greenberg v Union Yeast Products (Pty.), Ltd., 1936 W.L.D. at p. 96; Sinovich v Hercules Municipal Council, 1946 AD at p. 803. Even H if it be assumed that the general words of sec. 94 (g) may be wide enough to include a power to abolish an application accompanied by a provisional specification, such power is not specifically conferred, and rule 13 (2) (a) may therefore be ultra vires if it is unreasonable in its operation. Rule 13 (2) (a) is unreasonable because it discriminates between different classes of applicants; cf, the requirements to be complied with by a local applicant for a patent for a mechanical invention and those to be complied with by a local applicant for a plant patent; cf. also the advantageous

1961 (1) SA p135

position of a peregrinus in terms of sec. 95 (7) with that of an incola in terms of rule 13 (2) (a), when, both conducting experiments with plants, they make the same invention. A rule framed under an enabling Act which unfairly discriminates between different classes of persons A without the specific authority of the Act is unreasonable and therefore ultra vires; see Natal Organic Industries (Pty.), Ltd., v Union Government, 1935 NPD 701. Rule 13 (2) (a) is also unreasonable by reason of the expense to which an applicant for a plant patent is put to provide a complete specification and the expensive security measures which an inventor must take while conducting further trials. Further, if B an applicant wants the type of provisional protection enjoyed by applicants for patents on mechanical inventions, he has to file expensive patent applications (even though accompanied by provisional specifications) in a convention country. There is nothing in sec. 94 (1) (g) or in rule 13 which leads to the conclusion of the Commissioner of C Patents that by the time an application for a plant patent is made 'the stage has necessarily been reached when its novelty and distinctiveness, etc. are known and fully established', nor can such an inference be drawn from the nature of plant patents. On the contrary it may well be that characteristics found in a test bed under sheltered conditions do not come true in the normal conditions of horticulture. It D is not clear how a provisional specification, followed by a complete specification after the lapse of twelve months may delay or prejudice examination by the Department of Agriculture. A rule could have been framed under sec. 94 (1) (g) empowering the Registrar to submit any application for a plant patent (whether accompanied by a provisional, or E a complete, specification) to the Department for a report. For the reasons advanced supra, there is, contrary to the Commissioner's conclusion, a real need for a provisional specification as far as an application for a plant patent is concerned. Provisional protection is a sine qua non if an inventor wishes to put out the new plant to public trial e.g. a trial held by a horticultural society, in order to arrive F at a final decision on the value of the plant. It is only at this stage that an inventor will be in a position to decide whether to incur the expense connected with the preparation of a complete specification.

A. S. van der Spuy, namens die respondent: Sec. 94 (1) (g) is wide enough to enable the Governor-General to make a regulation such as reg. G 13. Sec. 94 (1) (g) should not be restricted to matters ejusdem generis such as 'coloured drawings' and 'specimens of plants', as no distinctive genus or category is mentioned in the section; cf. the words 'may include' and 'and other...