Shezi Industrial Holdings (Pty) Ltd v Feltex Holdings (Pty) Ltd

• Jurisdiction: South Africa
• Judge: DS Fourie J
• Judgment Date: 01 April 2014
• Docket Number: 2003/9331
• Court: Commissioner of Patents
• Hearing Date: 01 March 2014
• Citation: 2014 JDR 0270 (CP)

Fourie J:

[1]

This is an application for the amendment of South African Patent No. 2003/9331 registered in the name of the applicant. The patent relates to metatarsal guards for footwear and in particular gumboots. Pending in this Court is the main application in terms of which the respondent applies for the revocation of the said patent in terms of section 61 of the Patents Act, No. 57 of 1978. That application has been stayed pending finalisation of this application.

BACKGROUND

[2]

The grounds relied upon in the revocation application are the following: first, the invention claimed in claims 1 to 4, 9, 11, 12 and 14 of the patent are not clear and have no reasonably ascertainable meaning;

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Fourie J

second, the invention claimed in claims 1, 4, 8, 14 and 16 of the patent are not fairly based on the matter disclosed in the specification; third, the declaration and power of attorney contains a false statement or representation which is material; lastly, the invention claimed in each of claims 1 to 18 of the patent was at the date immediately before the earliest priority date not new and did not involve an inventive step within the meaning of section 25(1) of the Act.

[3]

These grounds for revocation are all denied by the patentee who has also pleaded that the application for revocation should be stayed pending an application to amend the patent in the manner set out in the proposed amendment annexed to the plea. Subsequent thereto, this application (the application to amend) has been filed. It is opposed by the respondent who is the applicant in the main application.

[4]

In essence, the applicant contends that the proposed amendment limits the claims to a single embodiment of the invention, being a metatarsal guard that has a plurality of impact absorption zones. It is also contended by the applicant that in the claims of the patent the proposed amendment combines the wording of certain of the claims before amendment and proposes the deletion of a number of old claims with a view of overcoming and avoiding the prior art cited in the revocation application.

[5]

The respondent opposes the application for amendment on the following basis: first, the amendment seeks to introduce new matter into

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Fourie J

the specification; second, the amendment is not fairly based on matter disclosed in the specification before the amendment; third, the applicant had culpably delayed the application...