Keen and another v OHMS Innovations (Pty) Ltd and another
| Jurisdiction | http://justis.com/jurisdiction/166,South Africa |
| Judge | Bokako AJ |
| Judgment Date | 31 January 2023 |
| Docket Number | 2019/05483 |
| Hearing Date | 16 August 2022 |
| Court | Commissioner of Patents |
Bokako AJ:
INTRODUCTION:
This is an application for relief in terms of section 28 of the Patents Act, 57 of 1978 ("the Act"). This application has been opposed by the respondents and the parties have exchanged the required affidavits.
This section confers jurisdiction on this court to determine disputes between persons as to their right to or title in a patent. [1] It also empowers the court to order that a person execute a deed of assignment in respect of the patent if the court declares that a person has a right to the exclusion of any other person to apply for a patent. The applicants assert, and the respondents do not contest, that this dispute fall within the provisions of section 28(1).
ISSUES OF DISPUTE:
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Bokako AJ
The applicants dispute, in respect of the patent in issue, being South African Patent number 2019/05483 entitled 'METHOD OF UNDERGROUND MINING' ("the patent"):
the respondents' rights to obtain the patent;
the respondents' rights to make, use, exercise or dispose of the invention in the patent; or
the respondents' rights to or title in the patent.
The applicants seek various heads of relief in respect of the patent under section 28, on the basis that the persons cited in the patent and who brought the application for the patent, did not and do not have a right to do so.
The application is mainly concerned with (under s28 of the Act) who is entitled to the patent.
The Applicants seek a declarator that the first respondent holds no entitlement or right "to obtain" [2] South African patent number 2019/05483 entitled "Method of Underground Mining";
Applicant seeks an order that the first respondent be ordered to assign the patent to the applicant.
They seek to order the Registrar of Patents to carry out certain directions in circumstances where the Registrar has not been joined.
As is appropriate under circumstances of relief pursuant to s28 of the Act, the applicants seek relief entitling them to claim damages for past infringement of the patent.
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Bokako AJ
BACKGROUND:
The Applicant's contends that by virtue of the nature of this opposed application, the Commissioner is required to adjudicate the application having the benefit of the applicants' facts, evidence and submissions in support thereof. In that the Plascon-Evans rule provides that where disputes of fact arise on the affidavits in motion proceedings, "a final order can be granted only if the facts averred in the applicant's affidavits, which have been admitted by the respondent, together with the facts alleged by the latter, justify such an order of or an independent contractor consulting to the fourth respondent. As contended by the Applicant, it was stated that the patent abstract was found to have been published in the Patent Journal, that was issued on 23 December 2020.
On the 21st of August 2018, the first respondent lodged a South African Provisional Patent application number 2018/05555 for the registration of a patent with the South African Patent Office. On the 20th of August 2019, South African Complete Patent application number 2019/05483, claiming priority from 2018/05555 was filed by the first respondent with the South African Patent Office; on the 17th March 2020, the registrar of patents accepted the complete specification of 2019/05483 as it complied with formalities as required by the Patents Act and Regulations; the inventors" are named to be Jacobus Johannes Geyser and Schalk Stephanus Prinsloo (the second and third respondents). On the 23rd of December 2020 the registrar granted the patent to the first Respondent. The field of the invention covered by the patent in issue is a 'Method of Underground Mining'.
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Bokako AJ
The Applicant further contends that the invention relates to a method of total extraction of ore pillars in underground mining operations. In years gone by, it was common in the mining industry to not mine out so called 'ore pillars' or "reef pillars" but to leave these pillars in situ. Further contending that in his experience in the industry, the available methods to stabilise underground excavations did not adequately address the necessity to stabilise excavations in underground mining operations.
The Applicant set out to develop a satisfactory method, he recognised that these pillars contain the same minerals as the surrounding stopes that have been mined and the pillars could be mined to extract those minerals and increase yield and production. He also recognised the need for effective and efficient mining methods by which these pillars, could safely be replaced with so-called "support pillars", or "pseudo pillars" Thus, he determined and developed a novel and unique means to overcome a foregoing difficulty, through his technique of utilising pseudo-pillars that do not comprise ore. The Applicant further submitted that he devised the invention as described in the specification of the patent prior to its priority date and that the first respondent, claiming to be the patentee of the patent, was never involved in this process; and neither of second or third respondents.
The Applicant contends that he is an independent consultant, contracted as such to render services from time to time in favour of the second applicant and in respect of its underground mining operations. He has been in this position since August 2018. For several years, prior to his current appointment with the second applicant, he was contracted to
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Bokako AJ
perform services at, inter alia, Cooke Operations, Randfontein Estates, Sibanye Gold through Open House. The Applicant have more than 50 years' experience in underground mining operations and rock engineering. He holds an Onsetter or Banksman's certificate, awarded to me in 1972, an elementary certificate for surveyors, awarded to him in 1976 by the Union Corporation Limited, a Mine Overseers Certificate of Competency, also was awarded in 1980 a certificate for completion of a Rock Mechanics for Practitioners course, during 1986; a certificate in Rock Mechanics was awarded to him in 1986, certificates for the successful completion of Computer Training Basic Excel and Basic Windows and at Kinross Mines Limited.
He was contracted by Open House in terms of a letter of appointment, drawn up by the Open House management. He signed and concluded on the 12th of August 2012. His appointment was with effect from 13 August 2012. Contending that he was never treated as an employee at Open House. The pillar replacement technology that the Applicant developed was technology that he had begun to develop and had been known to him since the late 1990's. The Applicant brought his knowledge and experience in respect of pillar replacement technology to the contract of appointment with Open House. Open House did not have any such advanced experience and knowledge; the Applicant was consulted to become appointed as Rock Engineer on behalf of Open House. An interview took place in the first half of 2012, at a restaurant near Carnival City. During this interview, the Applicant contends that he disclosed to Steinmann information that was of a confidential nature.
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Bokako AJ
The Applicant further contends that he devised and developed the pseudo-support pillar technology. In doing so, he brought his extensive expertise. He has been employed in various positions as Geologist, Chief Geologist and Mineral Resources Manager for the past 25 years in East Rand mining operations.
His concept was not pursued because, at the time, it was not financially viable as a result of the poor gold price. He had developed this technology and was known to him only.
It is this technology which the respondents, jointly and severally, are now seeking unlawfully to appropriate for themselves and misrepresent as their invention and intellectual property.
The contents of his draft paper remain confidential and was done by him in his personal capacity, contending that the Respondent's plagiarised an unauthorised reproduction and presentation of his work. Submitted that not only is the Respondent's application fraudulent, unlawful, non-compliant with the provisions of the Patent Act, but it is also a material misrepresentation of the true state of affairs relating to the introduction and use of pseudo pillars support technology and underground mining.
He is a true and only inventor of the method of underground mining to which the first respondent now seeks, fraudulently and falsely, to lay claim He never authorised any assignment of the invention to the first respondent and the first respondent was not a person entitled in terms of the relevant provisions of the South African Patents act to apply for the patent.
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Bokako AJ
The respondents each acted and contributed to the unlawful, misrepresenting and misleading application under number 2019/05483 that had been made for a South African patent.
In the premises, there exists a clear dispute between the applicants, on the one hand, and the respondents on the other hand, in respect of the right of the latter to have obtained the patent for my invention, as well as to the respondents' rights to or title in the patent in issue.
The Respondent contends that the first applicant did not make the invention which is the subject of the patent; and even if he did make a contribution, he did so during the course and scope of his contract with the fourth respondent, which disentitles him to claim any right to the patent.
It was also submitted by the Respondent that the first Applicant concluded a contract of employment with the fourth respondent in on the 12th of August 2012. Although the first applicant claims to...
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