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[2014] ZAGPPHC 476
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Antel and Another v Virtual Consulting Engineers (Pty) Limited and Others (63720/12) [2014] ZAGPPHC 476 (27 February 2014)
IN
THE COURT OF COMMISSIONER OF PATENTS
FOR
THE REPUBLIC OF SOUTH AFRICA
Case No: Patent
2003/9331
Date: 17 February
2014
Not Reportable
Not of interest to
other judges
In the matter
between:
SHEZI INDUSTRIAL
HOLDINGS (PTY)
LTD
............................................................
Applicant
(Patentee)
and
FELTEX HOLDINGS
(PTY)
LTD
.................................................................................................
Respondent
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. 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 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 fairiy 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 (Pty)
Ltd & Another v J P McKelvey & 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
,
3
rd
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
whichj 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 (p437) 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
McKelvev
,
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 í 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