Kimberly-Clark of SA (Pty) Ltd (Formerly Carlton Paper of SA (Pty) Ltd) v Proctor & Gamble SA (Pty) Ltd

• Jurisdiction: South Africa

Kimberly-Clark of SA (Pty) Ltd (Formerly Carlton Paper of SA (Pty) Ltd) v Proctor & Gamble SA (Pty) Ltd
1998 (4) SA 1 (SCA)

1998 (4) SA p1

Citation	1998 (4) SA 1 (SCA)
Case No	A488/96
Court	Supreme Court of Appeal
Judge	Eksteen JA, Harms JA, Marais JA, Schutz JA, Plewman JA
Heard	May 14, 1998
Judgment	May 27, 1998
Counsel	CE Puckrin (with him JN Cullabine) for the appellant; No appearance for the respondent

Flynote : Sleutelwoorde B

Patent — Setting aside of amendment to — Patents Act 57 of 1978, s 51(10) — Section 51(10) introducing procedure comparable in some respects to appeal and review to ensure that essential limits to amplification of disclosure made C and alterations to boundaries of patent claims observed — Subsection (10) an internal mechanism in section to ensure substantive amendments going beyond those permitted are not entered on register — Adequacy of reasons provided to Registrar with applications for amendments in terms of s 51 for Registrar to decide and no jurisdiction to D review them after allowance created by s 51(10) — If Registrar's acceptance of reasons to be attacked, such attack to be made by common-law review.

Headnote : Kopnota

It is desirable in the public interest that industrial techniques should be improved. In order to encourage E improvement and the disclosure of improvements a person making such improvement is, upon disclosure thereof, given a monopoly for a defined period after which the improvement passes into the public domain. A further essential feature of the theory is that the patent register should not be cluttered with patents which are not valid. F Patentees are accordingly encouraged to review their patents in the light of new information which comes to hand and, if this is called for, to amend them. The Patents Act 57 of 1978 thus establishes a register of patents to give public access to the disclosure made. What is protected is an invention - that is, broadly stated, an improvement in technology which is new, useful and inventive (or non-obvious). In accordance with modern international practice the standard set is publicly available knowledge. The test as to what is patentable is to measure it against G the 'state of the art

1998 (4) SA p2

immediately before the priority date of any claim (in the specification)'. The notion of 'state of the art' includes any A matter which is available to the public by written or oral description in South Africa or elsewhere, the object being to prevent the creation of monopoly rights in respect of machines or processes already in the public domain. It is against this setting that the mechanism for the revocation of patents in s 61 of the Act and the B provision for the amendment of patents in s 51 should be seen. (At 14A/B--F.) No amendments may be made which would (i) introduce new matter or matter not in substance disclosed in the specification before amendment and (ii) no claim not fairly based on matter disclosed in the specification before amendment or (iii) include a claim not wholly within the scope of a claim in the patent before amendment. These limitations are fundamental to the C scheme of the Act. They are designed to ensure that a patentee may not obtain a priority date (that is the date from which a claim is to have effect) to which he is not entitled and may never broaden his monopoly after his invention has been made known to the public by public disclosure. Any amendment allowed in breach of these D provisions would, it is clear, be an amendment made in conflict with the provisions of the section. (At 9H--10B.) It might appropriately be asked what purpose disputes relating to the Registrar's conduct would serve than to ensure that disclosures of technological improvements are properly made and monopolies are limited to valid patents which claim no more than is strictly justifiable. Procedural problems are not only different in character, they are also subject to different forms of control. (At 14G--H.) E

Seen in the light of this background s 51(10) of the Act must be interpreted as introducing a procedure comparable in some respects to an appeal and in others to a review jurisdiction to ensure that the essential limits to the amplification of the disclosure made and alterations to the boundaries of patent claims are observed. It is F an internal mechanism in the section to ensure that substantive amendments going beyond those permitted are not entered on the register. The adequacy of the reasons provided to the Registrar with applications for amendments in terms of s 51 is for the Registrar to decide and no jurisdiction to review them after allowance is created by s 51(10). If the Registrar's acceptance of the reasons is to be attacked, such an attack would have to be made by a common-law review and, if so attacked such an attack could normally only be made within a reasonable time. G (At 14H/I--15B.)

The decision in the Transvaal Provincial Division in Proctor and Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and Another 1997 (3) SA 292 (T) reversed.

Cases Considered

Annotations H

Reported cases

Aktie Bolaget Astra Apotekarnes Kemiska Fabriker v Willows Francis Pharmaceutical Products Ltd 1959 (4) SA 1 (T): referred to

Amalgamated Packaging Industries Ltd v Hutt and Another 1975 (4) SA 943 (A): considered I

Brelko CC and Others v Hans-Otto Schwarze and Others 1991 BP 100 (CP): not followed

G E Trade Mark [1973] RPC 297 (HL): referred to

Jaga v Dönges NO and Another; Bhana v Dönges NO and Another 1950 (4) SA 653 (A): considered

Lewis Berger and Sons Ltd v Svenska Ojeslageri Aktibolaget 1959 (3) SA 604 (T): dictum at 612A--C approved J

1998 (4) SA p3

Man-Dirk (Pty) Ltd v Yao-Chang Lin and Others 1993 BP 479 (CP): referred to A

Proctor & Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and Another 1997 (3) SA 292 (T): reversed on appeal

Rollamatic Engineering (Pty) Ltd v President Steel Corporation (Pty) Ltd; Rollamatic Engineering (Pty) B Ltd v Goldfields Engineering and Welding Works (Pty) Ltd 1973 BP 437 (CP): applied

Setsokosane Busdiens (Edms) Bpk v Voorsitter, Nasionale Vervoerkommissie, en 'n Ander 1986 (2) SA 57 (A): referred to

Stoner v SA Railways and Harbours 1933 TPD 265: referred to

Willows Francis Pharmaceutical Products Ltd v Aktiebolaget Astra Apotekarnes Kemiska Fabrieker C 1960 (3) SA 726 (A): referred to

Wolgroeiers Afslaers (Edms) Bpk v Munisipaliteit van Kaapstad 1978 (1) SA 13 (A): referred to.

Statutes Considered

Statutes

The Patents Act 57 of 1978, ss 51 and 61: see Juta's Statutes of South Africa 1996 vol 2-205, 2-208. D

Case Information

Appeal from a decision of a Full Court of the Transvaal Provincial Division (Eloff JP, McCreath J and Daniels J). The facts and the nature of the issues appear from the judgment of Plewman JA.

C E Puckrin SC (with him J N Cullabine) for the appellant.

No appearance for the respondent. E

In addition to the authorities cited in the judgment of the Court, counsel for the appellant referred to the following authorities:

A Sweidan and King (Pty) Ltd and Others v Zim Israel Navigation Co Ltd 1986 (1) SA 515 (D)

Administrator, Transvaal, and Others v Theletsane and Others 1991 (2) SA 192 (A) F

Afitra (Pty) Ltd and Another v Carlton Paper of SA (Pty) Ltd 1992 BP 331 (CP)

Anderson v Bank of British Columbia LR 2 ChD 644

Bank of Lisbon and South Africa Ltd v Tandrien Beleggings (Pty) Ltd and Others (2) 1983 (2) SA 626 G (W)

Barmac Associates Ltd v SA Dynamics 1991 BP 1 (CP)

Barmac Associates Ltd v SA Dynamics 1991 BP 16 (CP)

Bowes v Friedlander NO and Others 1982 (2) SA 504 (C)

Brink and Others v Commissioner of Police 1960 (3) SA 65 (T)

British Liquid Air Co Ltd v British Oxygen Co Ltd (1908) 25 RPC 577 H

Bullock v Corry (1878) 3 QB 356

Calcraft v Guest [1898] 1 QB 759

Carlton Paper of SA (Pty) Ltd v Clinipak SA (Pty) Ltd and Another 1992 BP 219 (CP)

Chevron Research Companies Patent 1979 RPC 580

Clevite Corporations Patent Amendment 1966 RPC 169 I

Columbit (Pty) Ltd and HH Zeh v Union Carbide Corporation 1986 BP 416 (CP)

Consol Board Inc v MacMillan Blodel Saskatchewan Ltd (1981)

Cornish Siever v Keen and Nickels (1835) 1 Web Pat Cas 512

Dantex Explosives (Pty) Ltd v Sasol Chemical Industries (Pty) Ltd 1992 BP 265 (CP) J

1998 (4) SA p4

De Beers Industrial Diamond Division (Pty) Ltd v General Electric Company 1988 (4) SA 886 (A) A

Dresser Industries Inc v South African Inventions Development Corporation 1982 BP 317 (CP)

Estate Bliden v Sarif 1933 CPD 275 B

Euroshipping Corporation of Monrovia v Minister of Agricultural Economics and Marketing and Others 1979 (1) SA 637 (C)

Feltex Ltd v Interfelt Products (Pty) Ltd 1971 BP 45 (CP)

Frank & Hirsch (Pty) Ltd v Weinenberger Aktiengesellschaft 1960 BP 162 (A)

Giovagnoli v Di Meo 1960 (3) SA 393 (D) C

Hassim and Another v Officer Commanding, Prison Command, Robben Island and Another; Venkatrathnam and Another v Officer Commanding, Prison Command, Robben Island and Another 1973 (3) SA 462 (C)

Hinks & Son v Safety Lighting Co (1876) 4 ChD 607

Hobbs v Hobbs and Cousens [1959] 3 All ER 827 (PDA)

Integrated Mining Systems (Pty) Ltd v Chamber of Mines of South Africa 1974 BP 281 (CP) D

Interfelt Products (Pty) Ltd v Feltex Ltd 1972 (3) SA 335 (T)

International Tobacco Co (SA) Ltd v United Tobacco Cos (South) Ltd (3) 1953 (4) SA 251 (T)

Johnson and Johnson (Pty) Ltd v Kimberly-Clark Corporation and Kimberly-Clark of SA (Pty) Ltd 1985 E BP 126 (A)

Kelvin v White, Thomson & Co (1907) 25 RPC 177

Kimberly-Clark Corporation and Kimberly-Clark of SA (Pty) Ltd v Johnson & Johnson (Pty) Ltd 1983 BP 160 (CP)

Lane Fox v Kensington and Knightsbridge Electric Lighting Co Ltd (1892) 9 RPC 413 F

Ex parte Luyt 1927 CPD 278

Lyon v Goddard 10 RPC...