Proctor & Gamble SA (Pty) Ltd v Carlton Paper of South Africa (Pty) Ltd and Another

• Judge: McCreath J, Eloff JP, and Daniels J
• Judgment Date: 11 June 1996
• Citation: 1997 (3) SA 292 (T)
• Docket Number: Unknown
• Hearing Date: 11 June 1996
• Counsel: P Ginsburg (with him ABS Franklin) for the applicant C E Puckrin (with him JN Cullabine) for the first respondent
• Court: Transvaal Provincial Division

McCreath J:

This is a matter which was referred to the Full Bench of this Division in view of conflicting decisions by various Commissioners of Patents on the interpretation to be given to ss (1) and (10) of s 51 of the Patents Act 57 of 1978 ('the Act'). E

The first respondent is the proprietor of South African patent No 77/1894 ('the patent'). The applicant seeks an order setting aside amendments to the patent granted by the second respondent at the instance of the first respondent or its predecessor in title. The applications for amendment were dated 19 February 1982 ('the first amendment'), 6 December 1993 ('the second amendment') and 6 December 1993 ('the third amendment') respectively. F

Section 51 of the Act provides as follows:

'51 Amendment of specification

(1) An applicant for a patent or a patentee may at any time apply in the prescribed manner to the Registrar for the amendment of either the G relevant provisional specification or the relevant complete specification, and shall in making such application, set out the nature of the proposed amendment and furnish his full reasons therefor.

(2) An application for the amendment of a specification that is open to public inspection shall, except in the case of an application so open in terms of s 43(3), be advertised in the prescribed manner.

(3) (a) Any person may oppose such application for amendment within the prescribed time and in the prescribed manner. H

(b) Such opposition to such application for amendment shall be dealt with by the Commissioner in the prescribed manner, and the Commissioner shall determine whether and on what conditions, if any, the amendment ought to be allowed.

(4) Where the acceptance of a specification concerned has not been published I in terms of s 42 or there is no opposition in terms of ss (3)(a) of this section, the Registrar may determine whether and on which conditions, if any, the amendment ought to be allowed.

(5) An amendment of a provisional specification shall be allowed if it is by way of correction, including correction of an obvious mistake, and no amendment of a provisional specification shall be allowed if it would introduce new matter or matter not in substance disclosed in the specification sought to be amended. J

McCreath J

(6) No amendment of a complete specification which becomes open to public A inspection after the publication of the acceptance of the specification in terms of s 42, whether before or after it so becomes open to public inspection, shall be allowed if -

(a)

the effect of the amendment would be to introduce new matter or matter not in substance disclosed in the specification before amendment; or B

(b)

the specification as amended would include any claim not fairly based on matter disclosed in the specification before amendment.

(7) No amendment of a complete specification which has become open to public inspection after the publication of the acceptance of the specification in terms of s 42 shall be allowed if the specification as amended would include any claim not wholly within the scope of a claim included in the specification before amendment. C

(8) Where an amendment may not be allowed by reason of the prohibition imposed by ss (6)(a), but it describes matter which may fairly be associated with the matter described in the specification as framed and the acceptance of the specification concerned has not been published in terms of s 42, the new matter may be introduced by way of a supplementary D disclosure attached to the specification and dated with the date on which the application for amendment is made: Provided that in determining the validity of the patent under this Act, regard shall be had to the date of the supplementary disclosure.

(9) Where any proceeding relating to an application for a patent or a patent are pending in any Court, an application for the amendment of the relevant specification shall be made to that Court, which may deal with E such application for amendment as it thinks fit but subject to the provisions of ss (5), (6) and (7), or may stay such pending proceedings and remit such application for amendment to the Registrar to be dealt with in accordance with ss (2), (3) and (4).

(10) Any amendment of a specification made in conflict with the provisions of this section, other than an amendment allowed by the Commissioner or a Court, may be set aside by the Commissioner at any time on application made to him.' F

In Columbit (Pty) Ltd and H H Zeh v Union Carbide Corporation 1986 BP 416...