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[2014] ZAGPPHC 62
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Shezi Industrial Holdings (Pty) Ltd v Feltex Holdings (Pty) Ltd (2003/9331) [2014] ZAGPPHC 62 (19 February 2014)
IN THE COURT OF
COMMISSIONER OF PATENTS
FOR THE REPUBLIC
OF SOUTH AFRICA
Case
No: Patent 2003/9331
DATE:
19 FEBRUATY 2014
In the matter
between:
SHEZI INDUSTRIAL
HOLDINGS (PTY) LTD
................................
Applicant
(Patentee)
And
FELTEX HOLDINGS
(PTY)
LTD
..................................................................
Respondent
DATE: 19 FEBRUARY
2014
JUDGMENT
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;
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. !t 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 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 and it should accordingly not be allowed; and
lastly, the continued invalidity
of the patent after the proposed
amendment based on the selected and limited grounds that a number of
the proposed claims to be
amended are unclear and the prescribed
declaration in respect of the patent contains a false statement.
PROCEDURAL
CONSIDERATIONS
[6] A comparison
between the application for revocation and the application to amend
will reveal that there is a large overlap between
the two
applications. In both applications issues such as the invention
claimed and the proposed amendment are not fairly based
on the matter
disclosed in the specification and that the prescribed declaration in
respect of the patent contains a false statement,
have been raised.
Furthermore, there appears to be a nexus between the last ground
relied upon (invention not new) in the application
for revocation and
the defence of continuing invalidity as raised in the application to
amend. It may well be that these issues
are not only overlapping, but
that they are also intertwined to such an extent that they should not
be dealt with separately.
[7] In Deton
Engineering (Ptv) Ltd & Another v J P McKelvev & Others 1997
BIP 113 (CP) Van Dijkhorst J, sitting as the Commissioner
of Patents,
refused to consider the question of continuing invalidity in
amendment proceedings, holding that they should be ventilated
in the
pending application for revocation. He justified this approach by
pointing out that where the viability of the patent itself
is the
subject of debate in another forum it would prima facie be folly to
introduce it as an issue in the amendment proceedings
when it is not
specifically pertinent to the amendment itself but only generally. He
also emphasised that amendment proceedings
should be relatively
simple and issues should not be allowed to multiply.
[8] In my view the
approach followed by Van Dijkhorst J applies with equal force to the
application before me. Furthermore, the
learned author, Burrell’s
South African Patent and Design Law, 3rd Edition, p 437 has commented
as follows on the approach
followed by Van Dijkhorst J:
"The line of
reasoning adopted by Van Dijkhorst J and as set out above will,
hopefully, lead to a more sensible practice being
in the future
adopted: a practice in which, in cases where an application to amend
the specification of a patent and an application
for the revocation
of the patent are both pending, the Commissioner will be inclined to
rule that, if there is a large overlap
between the two applications,
they should be heard together rather than separately as has
heretofore been the practice ”
[9] The same author
(p 437) also points out that there is no rule of procedure which
would deny a High Court the right to rule that
an issue raised in two
matters between the same parties be tried in one of the two matters
where it would be natural and more convenient
to do so, provided that
the ruling would not deny the party a substantive (as opposed to
procedural) right. I agree with this suggestion.
In any event, in
terms of
section 51(9)
, any amendment (where proceedings are already
pending) may be dealt with by the Court “as it thinks fit”.
[10] In this regard
one should also bear in mind that amendment proceedings should not be
turned into full scale revocation proceedings,
especially if there is
an application for revocation pending. If this were to be allowed,
the pending revocation proceedings can
be usurped and may eventually
become irrelevant (Deton Engineering v J P McKeivev. supra, p 118A).
For these reasons I am of the
view that the two applications, the
pending application for revocation and the present application to
amend, should be heard together.
Such a procedure will not deny any
party a substantive right, as all issues will be considered and
decided by the same Court and
not in a piecemeal fashion by different
Courts. The costs of this application should be reserved. In the
result I make the following
order:
1. The application
for revocation and the application to amend with regard to Patent
2003/9331 should be heard together;
2. The costs of this
application (application to amend) are reserved.
D S FOURIE
JUDGE OF THE HIGH
COURT
Date: 17 FEBRUARY
2014