Water Renovation (Pty) Ltd v Gold Fields of SA Ltd

• Jurisdiction: South Africa

Water Renovation (Pty) Ltd v Gold Fields of SA Ltd
1994 (2) SA 588 (A)

1994 (2) SA p588

Citation	1994 (2) SA 588 (A)
Case No	481/91
Court	Appellate Division
Judge	Botha JA, E M Grosskopf JA, Milne JA, Nicholas AJA and Harms AJA
Heard	February 25, 1993
Judgment	November 12, 1993

Flynote : Sleutelwoorde

Patent — Amendment of — Grant of application for amendment a discretionary F matter — Depends, inter alia, upon whether application (1) complies with provisions of s 51 of Patents Act 57 of 1978; (2) can attain its object; and (3) whether patent, after amendment, valid.

Patent — Amendment of — Object of application for amendment to remove G grounds for revocation — Revocation sought on grounds that configuration disclosed in claims 21-25 of specification became part of state of the art when disclosed in research paper prior to priority date for those claims — Aim of amendment to remove from body of specification any reference to experiments disclosed in research paper by introducing limitation (insert A) into claim 21, thereby removing research paper from contention — In H terms of s 25(5) of Patents Act 57 of 1978, claims 21-25 anticipated by research paper only if (1) research paper became part of state of the art prior to priority date and (2) research paper disclosed invention in its essential integers as claimed in claims 21-25 — Since express object of application for amendment was to remove grounds for revocation, in order I to assess whether introduction of insert A could achieve object of distinguishing claims 21-25 from research paper, it did not matter whether (1) and (2) established — If insert A not able to achieve intended object, amendment serving no purpose and cannot be granted — If insert A achieving objective, then amended claims novel in relation to research paper J irrespective of whether or not (1) and (2) established.

1994 (2) SA p589

A Patent — Amendment of — Object of application for amendment to remove grounds for revocation — Revocation sought on grounds that configuration disclosed in claims 21-25 of specification became part of state of the art when disclosed in research paper prior to priority date for those claims — Aim of amendment to remove from body of specification any reference to B experiments disclosed in research paper by introducing limitation (insert A) into claim 21, thereby removing research paper from contention - Applicant for amendment arguing that, if amendment allowed, insert A an essential integer of amended claim, and since configuration for conduit disclosed by insert A not disclosed in research paper, research paper not C destroying novelty of invention - Not disputed that conduit configuration, at date of complete specification, to knowledge of addressee in no way essential to invention — Whether insert A an essential integer depending upon interpretation of complete specification in amended form — Mere presence of insert A not conclusive proof that it was essential to invention — Conduit might be necessary integer, but that not meaning that D configuration described essential to invention — As to whether insert A elevated to essential integer, document in amended form, as a matter of principle, to speak for itself — Its history and reason for integer inadmissible extrinsic evidence — Insufficiently clear indication in E specification that insert A an essential integer — Furthermore insert A not serving to distinguish research paper — Amendment refused.

Headnote : Kopnota

The grant of an application for the amendment of a patent is a discretionary matter and is dependent, among other things, upon whether F the application complies with the provisions of s 51 of the Patents Act 57 of 1978; whether it can attain its object (for example, whether the amendment would remove an alleged invalidity); and whether the patent, after amendment, would otherwise be valid. (At 593J-594A/B.)

The appellant had filed a patent application on 4 November 1986 for an invention comprising (i) a method of and (ii) an apparatus for the separating of solids from the liquid in which they were suspended, with (iii) a feed means for feeding the suspension into the separating G apparatus. The provisional specification which accompanied the application contained no claims, but included a description and drawings of the invention. By agreement between the appellant and the Chamber of Mines, one of two pilot plants for the purposes of further testing was built at a research facility maintained by the Chamber at one of its member mines (ERPM). The results of the further development work done at ERPM were published on 13 November 1987 in a paper delivered by the manager of the research facility ('the Pulles paper'). The appellant filed a complete H specification on 2 February 1988, claiming as the only priority date 4 November 1986, which meant that the novelty of the invention had to be assessed on the day immediately prior to 4 November 1986. The patent was sealed on 28 June 1989.

The respondent mining company launched an application on 27 October 1989 for the revocation of the patent on the grounds that (a) the development work carried out at ERPM between the filing of the provisional and final specifications had resulted in a new apparatus; (b) the new configuration, I which was the subject of claims 21-25 of the final specification, had not been part of the disclosure in the provisional specification; (c) the new configuration had become part of the state of the art when it had been disclosed in the Pulles paper; and (d), in any event, the assignee of the patent and Pulles were co-inventors of the new configuration. The appellant filed a counterstatement admitting that claims 21-25 had not fairly been based on matter disclosed in the provisional specification and J that such claims were thus only entitled

1994 (2) SA p590

A to a priority date of the later complete specification, but denying that the Pulles paper had formed part of the state of the art before the date of the complete specification. At the same time it applied for the amendment of the patent. The aim of the proposed amendment was to remove from the body of the specification any reference to the experiments conducted at ERPM and to introduce, by insert A, a limitation into claim 21, thereby removing from contention the Pulles paper so that it could no longer be relied upon to destroy the novelty of claims 21-25.

B The separating apparatus described in both the provisional and complete specification consisted of a vertical cylindrical body, divided operationally, but not mechanically, into three zones, being the upper zone where clarified liquid collected, the lower zone where separated solids collected and the intermediate feed zone. The feed means were described as consisting of a cylinder of a diameter smaller than that of the separating apparatus, located within the intermediate feed zone, into C which untreated liquid was fed and where separation took place. The complete specification contained a detailed exposition of what was termed a 'second embodiment' of the feed means. It was this 'second embodiment', described in claims 21-25, which was alleged to have been not fairly based on the provisional specification. In the 'second embodiment' the feed means consisted of a second cylindrical member located at least partially D within the first cylinder of the feed means into which untreated liquid was transported through a feed conduit. Two examples of such feed conduit were described: one co-axial with the second cylinder; and the other extending radially through the side walls of the main vessel and the two cylinders. The latter conduit had been described in the Pulles paper. In claim 21 in its unamended form the configuration of the feed conduit was immaterial. By means of insert A, the appellant sought to amend claim 21 so as to confine the configuration to the co-axial feed conduit not E described in the Pulles paper. It was argued by the appellant that, if the amendment were allowed, insert A would be an essential integer of the amended claim and, since the configuration was not found in the Pulles paper, the Pulles paper could not destroy the novelty of the claimed invention. It was not in dispute that the configuration of the conduit, at the date of the complete specification, had to the knowledge of the addressee in no way been essential to the invention.

F In terms of s 25(5) of the Act, claims 21-25 could have been anticipated by the Pulles paper only if (1) the priority date of the claims was the date of the complete specification; (2) the Pulles paper had become part of the state of the art prior to that date; and (3) the Pulles paper had disclosed the invention in its essential integers as claimed in claims 21-25.

Held (per Harms AJA; Botha JA and E M Grosskopf JA concurring, Nicholas AJA and Milne JA dissenting) that, since the express object of the G application for amendment had been to remove the grounds for revocation and not to litigate the validity of the unamended specification, in order to assess whether the introduction of insert A could achieve the object of distinguishing claims 21-25 from the Pulles paper, it did not matter whether (1), (2) and (3) above had been established, whether by admission or otherwise: if it were found that insert A could not achieve the intended object, the amendment would serve no purpose and should for that reason not be granted, whereas if insert A did serve to distinguish claims H 21-25 from the Pulles paper, the amended claims would be novel in relation to the Pulles paper, irrespective of whether (1), (2) and (3) above had been established or not. (At 595D/E-G.)

Held, further (per Harms AJA; Botha JA, E M Grosskopf JA, Milne JA and Nicholas AJA concurring), that whether insert A would be an essential...