Victoria Engineering Works (Pty) Ltd v Derry Engineering (Pty) Ltd

• Jurisdiction: South Africa
• Judge: AJ Louw AJ
• Judgment Date: 23 December 2019
• Docket Number: 2016/06828
• Court: Commissioner of Patents
• Hearing Date: 23 December 2019
• Citation: 2020 JDR 0320 (CP)

AJ Louw AJ:

[1]

This is an application for the revocation of South African patent 2016/06828 that was filed in the name of the Respondent as Patentee entitled "Water Cut Off Back Head for a Rock Drill (hereafter referred to as "the patent").

[2]

I thank Mr Marriott for the instructive heads of argument and the focused oral argument that he presented. It was of great assistance.

[3]

The application is opposed. The Patentee/Respondent filed an answering affidavit. There are numerous factual disputes on the papers. I will deal with this issue hereinafter. There was no appearance on behalf of the Respondent at the hearing of the application. I need to point out that the Applicants delivered the notice of set down to the Respondent's attorneys of record on 19 June 2019 and filed same with the Registrar on 20 June 2019. The matter was properly enrolled. At the outset of the argument Mr Marriott informed me that the Applicants had made enquiries and that the absence of the Respondent at the hearing was a conscious decision on its part not to appear. I nevertheless consider the matter taking the opposing affidavit into consideration, as I should.

[4]

The priority date of the patent is 6 October 2015 as per the Companies and Intellectual Property Commission register of patents.

[5]

The application for the revocation of the patent is set out in the Applicants' form P20 dated 29 March 2018. The grounds of revocation of the patent are set forth in paragraphs A, B, C, D and E of this document

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AJ Louw AJ

and can be summarised as follows: the patentee is not a person entitled under section 27 of the Patents Act 57 of 1978 ("the Act") to apply for the patent as contemplated by section 61 (1) (a) of the Act (ground A); the grant of the patent is in fraud of the rights of the Applicants (ground B); in the alternative to grounds A, B, D and E the inventions claimed in claims 1 to 6 are not patentable under section 25 (1) of the Act in that none of the respective inventions claimed in each of claims 1 to 6 of the patent were new at the date immediately before the earliest priority date of 6 October 2015 and within the meaning of sections 25 (1) and 61(1)(c) of the Act (ground C); alternatively to grounds A, B, C and E the inventions claimed in each of claims 1 to 7 are not patentable under section 25 of the Act in that none of the respective inventions claimed in each of claims 1 to 7 of the patent involved an inventive step at the date immediately before the earliest priority date of 6 October 2015 and within the meaning of sections 25(1) and 61(1)(c) of the Act (ground D); the prescribed declaration lodged in respect of the application for the patent contains a false statement or representation which is material and which the patentee knew or ought reasonably to have known to be false at the time when the statement or presentation was made, as contemplated by section 61 (1) (g) of the Act (ground E). These grounds for the revocation are elaborated on in the Applicants' amended statement of particulars.

[6]

In the Patentee's counterstatement the Patentee denied all the grounds for the revocation.. Only as regards grounds C and D it admits that

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AJ Louw AJ

certain US patent formed part of the state of the art before the priority date of the invention.

[7]

The opposing affidavit elaborates on the denials.

[8]

There is no request to refer the matter to trial or to oral evidence on particular questions. The Respondent said in the answering affidavit as deposed to by Mr Cocci that should the question of disclosure to third parties by the Applicants become important to the outcome of these proceedings, the Respondent...