Power Steel Construction Co (Pty) Ltd v African Batignolles Constructions (Pty) Ltd
Jurisdiction | South Africa |
Judge | Centlivres CJ, Schreiner JA, Van Den Heever JA, Hoexter JA and Fagan JA |
Judgment Date | 08 September 1955 |
Citation | 1955 (4) SA 215 (A) |
Court | Appellate Division |
Schreiner, J.A.:
The definition of invention in sec. 6 of Act 9 of 1916, which applies to the present matter, is, so far as relevant, 'any new H and useful art, process, machine, manufacture or composition of matter.' You can thus have patentable inventions that are processes and patentable inventions that are machines. (It is unnecessary to consider whether all inventions covered by the definition can be brought under one type or the other, or whether, if so, any change has in this respect resulted from the altered definition in sec. 1 of Act 37 of 1952.) Your specification must, in terms of sec. 15 of Act 9 of 1916, not only
Schreiner JA
describe the invention but must also describe the manner of performing it. If your patent is for a process or, as it is also called, for a method, you normally describe your manner or means of performing it by setting out the details of a machine or apparatus by which the method or A process can be put into operation. In sec. 10 (3) (b) of Act 37 of 1952 the word 'method' is apparently used, perhaps somewhat confusingly, as equivalent to the manner or means of performance.
If on the other hand your invention consists of a machine and your patent is consequently a machine or article patent, your obligation to describe it and the manner of performing it requires, in addition to a setting out of the details that show exactly what the machine or article B is, a description of its purpose, informing the public what it aims at achieving and how it works.
The description of the means of putting the method or process into operation in the one case and the description of the purpose and functioning of the machine or article in the other tends, rightly or C wrongly, to overflow from the body of the specification into the claims, and this may create difficulty. It can happen that the description of a method with its means may look rather like the description of a machine with its purpose and functions; which is the true view in any particular case is a question of interpretation. The Commissioner held that the D patents in this case were for a method, as improved, and not for a machine, as improved. The Transvaal Provincial Division took a different view - it came to the conclusion that the invention was for the 'machine plus method of operation', or, as it is put elsewhere in the judgment, for 'the machine and method as one invention.' The latter form of expression I find somewhat confusing. It seems to me that for the E proper decision of the case it was necessary to see (a) whether there were, possibly, two inventions covered by the one patent, including for present purposes, the patent of improvement, and (b) whether, if there was only one invention, it was a method or process invention or a machine or article invention. Taking the specifications as they stand it F seems to me, for the reasons developed by my Brethren, that the proper interpretation is that there was only one invention and that that invention was a method invention, with a description of means for carrying it out.
The judgment of the Court a quo deals with the cases of Adhesive Dry Mounting Co. Ltd v Trapp & Co., 27 R.P.C. 341, and L'Air Liquide SA G Georges Claude's Application, 49 R.P.C. 428, where words somewhat similar to the words 'For use in carrying out the method claimed in any of the preceding claims' were regarded as being consistent with the view that the claims in which they appeared were claims for an invention of a machine or article. The Court a quo, of course, appreciated that these cases do not furnish any sound reason for concluding that whenever words H of that kind are found in a claim they show or tend to show that the claim in question is a claim for a machine or article. But once that is recognised the cases lose almost all importance for present purposes. This case had to be decided upon the proper meaning and effect of the particular specifications in question. I am satisfied that the words in claim 6 preface means
Van den Heever JA
claims in a method patent and not claims for a machine invention. Subject to the above comments I agree with the reasons of my Brethren, and accordingly I agree that the appeal should be allowed.
Judgment
Van den Heever, J.A.:
A Respondent Company is the proprietor of two unexpired patents, Nos. 9323 and 10802, the second being a patent of addition. Both are entitled
'An improved method of, and means for casting in situ concrete structures, particularly reinforced concrete cooling towers'.
B Both patents were granted under the provisions of Act 9 of 1916. In the complete specification of the main patent both method and means are set out in great detail and illustrated by drawings. Having
'particularly described and ascertained the nature of our said invention, and in what manner it is to be performed'
the patentee proceeds to make 22 claims. The first five claims and claim C 21 are method claims. Of these the first and widest claim asks for protection for a method of casting in situ concrete structures, particularly reinforced concrete cooling towers, characterised in that the method involves seven steps. The other four method claims contain subordinate integers of the method.
Claim 6 opens the 'means' claims and is prefaced by the phrase 'For use D in carrying out the method claimed in any of the preceding claims, means comprising . . .'. All the subordinate 'means' claims save No. 22 are intergated by reference directly or indirectly with No. 6. Claim 22 reads:
'Means for use in casting in situ concrete structures, particularly reinforced concrete cooling towers, constructed, arranged and adapted to be used or to operate, substantially as described and illustrated in the accompanying drawings.'
E One of the 'means' claimed - I do not at present consider the scope of the claim - is a hoist-tower carrying a radial arm adjustable as to length and height and chutes for depositing concrete on the structure being built.
Patent No. 10802 purports to disclose 'an improvement in or modification F of the invention set forth in our patent No. 9323.' The first claim reads:
'An improvement in or modification of our invention set forth in our patent No. 9323 comprising in combination, a tower which is adapted to be heightened at will, e.g. by making additions to the top thereof, etc., etc., . . .'
The 12th claim reads:
'An improvement in or modification of the invention set forth in our patent No. 9323, constructed, arranged and adapted to be used G substantially as herein described and illustrated in the accompanying drawing.'
Appellant company averred that it had invented a method of constructing cooling towers and had designed equipment for that purpose. Disclosing the nature of its alleged invention it called upon respondent in terms of sec. 6 (1) (a) of Act 37 of 1952 for an acknowledgment that execution H and use of the method and equipment invented by appellants would not be an infringement of respondent's patents Nos. 9323 and 10802 or either of them. Upon this request being refused appellant applied to the commissioner's court in terms of sec. 56 of Act 37 of 1952 for a declaration that use of the method and apparatus particularised in appellant's confidential disclosure would not constitute an infringement of Union patents 9323 and 10802, or either of them.
Van den Heever JA
In their petition appellants admit that in the use of its method and apparatus
'the hoist-tower to pour the concrete mix will in all material particulars be identical with that described in the specification of patent No. 10802.'
It disavowed infringement, however, on the following grounds:
As to claims 1 to 5 and 21 of patent number 9323, your petitioner's method does not make use of the fourth and fifth steps listed in A the method claimed in claim 1 (on which claims 2, 3, 4 and 5 are dependent); and which steps are inherently included in claim 21.' (i.e. the usual final method claim, 'substantially as hereinbefore described with reference to the accompanying drawings'.)
As to claims 6 to 18 patent No. 9323, claim 6 (on which claims 7 to 18 are all dependent) is limited to use in carrying out the method claimed in any of claims 1 to 5. Your petitioner does not and will not use its apparatus for carrying out a method that falls within B the scope of any of claims 1 to 5.
As to claims 19 and 20 of patent No. 9323, these claims are integrated with claims 6 to 18, which your petitioner, for the reason...
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