IN THE COURT OF THE COMMISSIONER OF PATENTS FOR THE REPUBLIC OF
SOUTH AFRICA
1. REPORTABLE: NO
2. OF INTEREST TO OTHER JUDGES: NO
3. REVISED: NO ~ ----'>
DATE: 12/6/2025 /----
'-...:._-/ l
In the matter between:
TIMRITE (PTY) LTD
TUFBAG (PTY) LTD
and
VESPER PROJECTS (PTY) LTD
THE REGISTRAR OF PATENTS GDP Case no.: 2023-063620
Patent no: 2010/06044
First Applicant
Second Applicant
First Respondent
Second Respondent
This Order is made an Order of Court by the Judge whose name is reflected herein,
duly stamped by the Registrar of the Court and is submitted electronically to the
Parties I their legal representatives by email. This Order is further uploaded to the
electronic file of this matter on Case Lines by the Judge or his I her secretary. The
date of this Order is deemed to be 11 June 2025.
In re: Application for the amendment of South African Patent of Addition No.
2010/06044 in terms of section 51(9) of the Patents Act, No. 57 of 1978
JUDGMENT
Strydom AJ
1) The first Applicant ("Timrite") is the holder of a patent, entitled "Yielding Mine
support" relating to a mine support pack which incorporates a load support bag,
that includes a grout bag with a yield element ("Timrite's patent"). It now applies
to amend certain clams of this patent.
2) The patent, in its current form, is the result of a prior amendment application
which served before the registrar in 2016. At that time, Timrite motivated the
amendment by stating that it was brought “.... to narrow the scope of claim 1 with
a view further to differentiate the claimed invention from GB2,131.850,
WO03/085234, US2010/0189514, US4,966,310, US 5,660,478, US5,665,887
and US6,109,785.” The 2016 amendment application was, initially , vigorously
opposed by Company S (not a party in the present dispute ), however, following a
settlement reached inter partes, the opposition was withdrawn in 2017 and claim
1 was duly amended.
3) Vesper, the first respondent, sells a competing mine support pack (the “Vesper
bag”) . In 2023, it received a letter of demand from Timrite, accusing it of infringing
on Timrite’s patent and warning that, should it persist in infringing , Timrite would
consider instituting patent infringement proceedings , includ ing claims for
interdictory relief, delivery of infringing products for destruction and/or an enquiry
into damages and costs.
4) Vesper countered the by launching an application for declaration of
noninfringement (“the declaration application”) in terms of section 69(1) of the
Patent’s Act, where it argues for such a declaration on the basis that:
a) The Vesper bag does not infringe on Timrite’s patent given various
differentiations between the specification s of the two products;
b) Even if it was infringing, current claims 1 and 15 (the independent claims) are
invalid for lack of novelty and/or was not inventive in light of three prior art
documents: PCT/IB2008/000107 ( “IB107”), PCT/IB03/01323 (“IB323”) and
PCT/GB98/02363 (“GB363”).
5) IB323 is specifically mentioned in the reasons provided for the 2016 amendment
application. Timrite submits that, in 2016 it was not aware of IB107 and it only
came to their attention when they perused the affidavit of Mr Keen , Vesper’s
expert , attached to Vesper’s founding affidavit in the declaration application. In
relation to GB 363, Timrite admits to having been aware of and having considered
it for purposes of the 2016 amendment . However, i t explains that, as , at that
stage , it did not consider GCB363 to be “ one of the most relevant prior art
documents” , it was not pertinently mentioned in the reasons for the 2016
amendment application .
6) The decl aration application remains pending as Timrite, having given notice of
opposition, has yet to file its answering affidavit .
7) Instead, Timrite has brought the present application to amend . Objectively, there
can be no real dispute that the amendments are sought as a result of the
evidence contained in Mr Keen’s declaration application . Timrite has attached
Keen’s declaration affidavit to its founding affidavit herein. Under the heading
“reasons”, Timrite starts its motivation for the amendments sought by first
engaging with the allegations contained in Mr Keen’s declaration affidavit as
follows:
a) In paragraph 9 of his declaration application affidavit, Mr Keen states that
some of the claims of the patent are not novel in light of the disclosures in
GB363.
b) Mr Keen ’s contention is incorrect as the claims are novel as they differ from
the disclosures contained in GB 363 in the following respects:
i) The straps described and shown GB363 include metal bracing plates
through which the loop portions of the straps pass as well as a heavy -duty
metal ring through which the loop portions pass and are folded over.
ii) GB363 does not disclose two lines of stitching and also does not contain a
disclosure of the opposite ends of the at least one strap being stitched into
the opposed lines of stitching.
8) Invalidity of the claims in their current form, having been so denied, Timrite then
indicates that it now“...wishes to better define the invention by specifying
important features of the commercial embodiments of the invention in the
amended independent claims 1, 15 and 16 to 19 ” by:
a) Amending claims 1 and 15 to include two following additional specifications:
"each line of stitching forms an intermediate seam on the side surface ” and “at
least the opposite ends of the at least one strap being stitched into the
intermediate seams" ,
b) Adding new independent claims 16 to 19 and a new depe ndant claim 21
i) New claims 16,18 and 21 introduce the following additional specific ation :
"the or each strap comprises a reinforcing web constituted by a layer of
fabric "
ii) New claim 19 introduces the following additional specification:
iii) “the grout bag being internally divided by at least one layer made up of the
first yield control element comprising a reinforcing web constituted by a
layer of woven polypropylene fabric "
c) Deleting claim 17 and the omnibus claims 18 to 20 .
9) Vesper opposes the application and has advanced four grounds of objection. It
has attached to its answering affidavit a second affidavit deposed to by its expert,
Mr Keen (“Keen’s amendment affidavit ”), wherein he provide s evidence and
argument in relation to the four grounds of objection , namely:
a) In relation to the proposed new claims 16, 18, 19 and 21: That t he
amendment s sought do not comply with section 51(6)(b) of the Act as the y are
not fairly based on matter disclosed in the specification before amendment
(“lack of fair basis”);
b) In relations to proposed new claims 1 and 15 : That t he amendment serves no
purpose because the claims in their current form are invalid for lack of novelty
and the proposed amendments will not cure the invalidity (“continuing
invalidity”);
c) That Timrite has failed to provide full reasons for the amendment (“failure to
provide reasons”);
d) That, as Timrite has delayed, culpably, in bringing the application to amend,
and has acted mala fide in threatening to enforce , an invalid patent , this court
should exercise its discretion to refuse the application (“culpable delay and
reprehensible conduct” ).
Issues for determination
10) Timrite has , as a preliminary point, argued that the continuing invalidity objectio n
should not be decided in the present application and should, instead be deferred
for decision simultaneously with the pending declaration application. As the
culpable delay and reprehensible conduct objections are dependent on a
determination of existing invalidity of the patent, which forms part of the
determinations for purposes of the continuing invalidity objection, they by
necessary implication are to be likewise deferred.
11) In view hereof, it submits that for purposes of the present application, the only
determination that should be made is whether there is a fair basis for the
amendments , which it submits there is.
12) In summary, it submits that this court should :
a) Uphold the preliminary point and defer the continuing invalidity objections
(inclusive of the culpable delay and reprehensible conduct objections) to the
declaration application ;
b) After determining the preliminary point in its favour, proceed to:
i) Determine that there is fair basis for the amendments and dismis s the fair
basis objections ; and
ii) Dismiss the lack of full reasons objection .
c) Allow the amendments
15) Vesper argues that the continuing invalidity objection stands to be determined in
the current proceedings . As such, it argues that this court shoul d:
a) Dismiss the preliminary point;
b) After determining the preliminary point in its favour , proceed to:
i) Determine and uphold its continuing invalidity objection ; and/or
ii) Determine that there is no fair basis for the amendments and uphold the
fair basis objections ; and/or
iii) Uphold the lack of full reasons objection .
c) Dismiss the application
16) The commonality between the two submissions is that this court must decide
whether or not the amendments should be granted, taking into account, at least,
Vesper lack of fair basis objection.
17) Having noted in preparation that the arguments in relation to the lack of fair basis
objection, prima facie, also overlap with issues raised in declaration application, I
raised the possibility of postponing the entire application.
18) Counsel for both parties, were adamant that it is only in relation to continuing
invalidity objections that a court should apply the arguments made in the
preliminary point. It was also submitted that the legislative scheme of the Act
does not afford this court a discretion to defer the hearing of the entire application
on this basis.
19) I do not agree with the parties’ contentions in relation to the discretion and/or
powers of a court in patent amendment applications. I have found no basis for
such a limitation on the court’s powers . To the contrary, in the matter of
Antell1,(which I had also pertinently brought to counsels’ attention at the hearing)
Fourie J refused to decide either the lack of fair basis or the continuing invalidity
objections on the basis of overlap and , as a result , deferred the hearing of the
amendment application to pending revocation proceedings. I had also, in relation
to the submission on the legislative scheme referred counsel to the provision of
section 51(9) in terms of which any amendment may be dealt with by this court
'as it thinks fit' . Having also now considered, in depth, the reasoning of Van
Dikhorst J in Deton (fully discusse d below), I am further fortified in my view that,
as a general proposition, this court may decline to hear the application in tot o and
order that such an application be determined simultaneously with pending
proceedings.
20) That having been said , as context and a proper grasp of the issues is required
before any determination of overlap , similarity or deferral (in relation to any issue)
can be made, it was necessary to, in any event, hear the totality of the parties ’
submissions in relation to the amendments and the objections. .
Contextualisation
21) The relevance and “ranking ” of the respective objections raised by Vesper are
perhaps best understood with in the framework for deciding patent amendment
application , as set out by Supreme Court of Appeal (“SCA”) in Ausplow (Pty) Ltd
v Northpark Trading 3 (Pty) Ltd and Others2:
“This involves a number of distinct inquiries: (a) whether the patentee
complied with the order of the SCA quoted; (b) whether the proposed
amendments conflict with the provisions of s51(6) or (7) of the Act; (c) almost
invariably, whether the patent as amended will be valid; and (d) whether
there are reasons why the court’s discretion to refuse an amendment that is
otherwise in order should be exercised. It is not disputed that, as far as (a)
1 Antel and Another v Virtual Consulting Engineers (Pty) Limited and Others (63720/12) [2014] ZAGPPHC
476 (27 February 2014)
2 Ausplow (Pty) Ltd v Northpark Trading 3 (Pty) Ltd and Others [2011] 4 All SA 221 (SCA) (7 September
2011) (‘Ausplow ”)
and (b) are concerned, the onus of compliance rests on the patentee and
that, as far as (c) is concerned, the onus of continuing invalidity rests on the
objector: As to (d), the onus rests on the objector to establish the facts that
would entitle the cour t to refuse the amendment .
If an amendment fails at hurdles (a) or (b), that is usually the end of the
matter. Discretion does not arise. The same (possibly subject to what van
Dijkhorst J said in Deton Engineering (Pty) Ltd v JP McKelvey 1997 BIP
113) applies at hurdle (c). It is only if that is passed that the discretion to
refuse can arise. Whether a court has a discretion in the strict sense to
refuse an amendment has not yet been decided and need not be decided .”
22) For present purposes, the framework can be restated thusly:
a) Hurdle A: Has Timrite proven tha t that the proposed amendments are fairly
based on matter disclosed in the specification before amendment ? If not, the
amendments must be refused. If proven, the Court will still consider hurdles B
(if not considered yet) and C below.
b) Hurdle B: Has Vesper proven that the claims in their amended form will be
invalid ? If proven, the amendments must be refused. If not, the Court will still
consider hurdles A (if not considered yet) and C. It is however also open to the
court to decline to consider continuing invalidity in the amendment
proceedings and to postpone the question for determination simultaneous ly
with future pending proceedings . The circumstances under which th e so-
called “ Deton ”3 approach apply, will be further discussed below.
c) If the amendment is warranted per A and/or B supra, h as Timrite managed to
establish any other grounds upon which this court may exercise its discretion
to nonetheless refus e the amendmen ts?
23) Per clarification : The determinations of hurdles A and B are not interdependent
and do not follow each other consecutively . However, Hurdle C considerations
only come into play if it is found that that the amendments sought have overcome
both hurdles A and B (i.e are “otherwise in order’) .
3 Deton Engineering (Pty) Ltd v JP McKelvey 1997 BIP 113)
24) In relation to Hurdle C, in casu, Vesper has raised two objections that have been
held to be factors which a court may consider in the exercise of its discretion to
refuse an amendment that is otherwise in order :
a) the objection based on the failure to provide full reasons4 and
b) the objections based on culpable delay and reprehensible conduct.5
25) With regards to t he objections of culpable delay and reprehensible conduct it is
crucial to appreciate that Vesper can only avail itself of these objections in certain
very specific circumstances :
a) As Timrite denies pre amendment inva lidity, t he first proviso , in casu, is that
the court, in determining hurdle B finds that patent in its unamended form is
invalid. This much is trite and not disputed by either party .
b) There is , however, a second proviso : A court must also have found that, as
stated in Ausplow,”... the patent in its amended f orm w ill be valid .” In other
words, the court must determine post amendment validity in favour of the
applicant . The impact of this second proviso is that Vesper cannot avail itself
of these objections for purposes of its hurdle B continuing invalidity
arguments. The court must have dismiss ed the continuing invalidity objection
on the basis that the proven existing validity (proviso 1) will be cured by the
proposed amendments (proviso 2) before it will engage the subject matter of
these hurdle C objections.
Hurdle B “Continuing invalidity ”
26) As Timrite has raised a preliminary point in relation to the continuing invalidity
objection and much of my reasoning in relation to hurdle B also applies to hurdle
A, it is convenient to first deal with hurdle B.
27) This objection is raised in relation to the proposed amendments to claims 1 and
15. As previously indicated, the amendments sought directly address , at least
4 Bateman Equipment Ltd v Wren Group (Pty) Ltd 2000 1 SA 649 (SCA) para 13
5 Kgomo J, in SHFL Entertainment Inc (Formerly Shuffle Master Inc) v TCS John Huxley (Pty) Ltd and
Another 2013 SIP 92 (CP ) for instance, states at para 28 that: “The conduct of an applicant for an
amendment that might militate against the grant of an amendment includes undue delay in the moving of
the amendment, which delay prejudices or is potentially prejudicial to the [f] respondent; as well as mala
fides in seeking the amendment. ”
some, of the grounds upon which Mr Keen’s asser ts, in his declaration
applicati on.
28) Vesper maintains that, for the reasons elucidated in Mr Keen ’s declaration
affidavit , the claims, in their current form are invalid . It then proceeds to argue,
per the reasons advanced in Mr Keen’s amendment affidavit , that the proposed
amendments will not cure th e existing invalidity.
29) Timrite , argues that this court should grant the amendments sought, without
entertaining the continuing invalidity objection . The argument, very broadly stated
is that:
a) Existing invalidity is not a bar to granting an amendment and, as such, it is
irrelevant for purposes of the current proceedings .
b) As amendment proceedings should be relatively simple, Van Di jkhorst’s
approach in Deton6 should be followed by deferr ing the continuing invalidity
objections to declaration application, where existing invalidity has been
pertinently raised.
The Deton arguments
30) Timrite contends that this court should grant the amendments and , essentially,
‘postpone ’ the d etermination of the continuing invalidity objection to the pending
declaration application as “...(t)he recognised approach to amendment
applications ought to be followed — the amendment application should be kept
simple. The applicants must demonstrate compliance with sections 51(6) and (7),
and continuing invalidity should remain where it belongs: in the declaration
application. “7
31) In support of this “recognised approach” Timrite referenced the following excerpt
of Van Di jkhorst J’s dicta in Deton8:
"It is evident that the commissioner when deciding whether to grant or refuse
an amendment will have regard to the efficacy of the amendment. Where an
amendment would obviously serve no purpose as it would not prune the dead
branch from the otherwise healt hy tree it should not be granted. The
6 Deton Engineering (Pty) Ltd and Another v 3 P McKelvey and Others 1997 BIP 113 (CP)
7 Timrite’s heads of argument para 41
8 Deton Engineering (Pty) Ltd and Another v 3 P McKelvey and Others 1997 BIP 113 (CP)
commissioner will not participate in an exercise in futility. But where the
viability of the patent itself is the subject of debate in another forum it would
prima facie be a folly to introduce it as an issue in the amendment
proceedings when it is not specifically pertinent to the amendment itself but
only generally It would tangentially multiply the issues. Amendment
proceedings should be relatively simple .” [Underlin g as per Timrite’s heads of
argument]
32) This excerpt is only part of Van Dikhorst J’s reasoning and should be interpreted
within context: :
a) The judgment starts b y explaining that the continuing in validity objections
raised in the amendment application did not arise as a consequence of the
proposed amendments.
“It is in fact an attack upon the remainder of the patent on the grounds of
invalidity advanced in the application for revocation which is pending but
not before me. There are other grounds of revocation too in that
application which have not been introduced as defences in this application
for amendment.”
b) Even though a Respondent in amendment applications is entitled to raise
grounds of invalidity outside the specifications of the amendments, Van
Dijkhorst J opines that, if validity of the patent in general is already the subject
of debate in another forum, it would “... prima facie be a folly to introduce it as
an issue in the amendment proceedings when it is not specifically pertinent to
the amendment itself but only generally It would tangentially multiply the
issues .” [Underlining my own]
c) It is in this sense that he then states that amendment applications “...should
be relatively simple .” In other words, the commissioner should preferably only
be tasked with deciding objections that relate to the amendments. To expand
the scope of the determination to determining viability of the patent in general,
would result in amendment proceedings becoming full scale revocation
proceedings.
d) He then warns that determinations of validity “...wider than that part of the
specification covered by the amendment ...”.may result in the pending
revocation proceedings being usurped and being rendered irrelevant ”...(as
on the basis of issue estoppel the parties would be found by the judgment on
the amendment )”.
33) Van Dikhorst J’s ‘commendable’ approach was therefore not that, as amendment
applications should be relatively simpl e, and continuing invalidity objections are
‘complex’ , such objections should not be determined by a court in amendment
applications.
34) To my mind, the commendability of the approach lies in Dijkhorst J’s appreciation
of the fact that the powers of a court in patent matters is no different from a court
in any other civil matters9 As a result, he then proceeded to determine the matter
with reference to ‘normal’ civil principles of law and procedure:
“I know of 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 that
matter where it would be natural and more convenient to do so, provided the
ruling would not deny the party a substantive (as opposed to procedural) right . In
the present case the deferral of the ad judication on the grounds of revocation to
the application for revocation affects the procedure but does not extinguish any
substantive right the responden t may have. In any event in terms of section
51(9) any amendment may be dealt with by this court 'as it thinks fit' .
[Underlining my own]
35) Essentially, Van Dijkhorst J ’s exercised his discretion (in refusing to consider the
continuing i nvalidity objections ) on the basis of the same considerations that
would apply in any case where separation of issues is considered in terms of
Rule 33(4) , such as:
a) Whether the issues in respect of which a separation is sought are discrete, or
inextricably linked to the remaining issues; 10
b) Whether it will facilitate the proper, convenient and expeditious disposal of
litigation and what advantages and disadvantages might flow from such a
separation .
9 In fact, it may be argued that given the provisions of S17(1) and S51(9) of the Act, a court in patent
matters has broader powers than it would have in normal civil proceedings.
10Copperzone 108 (Pty) Ltd v Gold Port Estates (Pty) Ltd 2019 JDR 0587 (WCC) para 25
c) Whether it would be appropriate and fair to all the parties or whether there is a
likelihood that such separation might cause the other party some prejudice.11
36) The excerpt relied on by Timrite (supra) is the application of these principles
within the cont ext of patent amendment applications. It sets out two conditions
that must be met before a court in patent amendment proceedings would
consider exercis ing its discretion in this manner:
a) First condition: The objections must relate to the of validity of the patent in
general and not the amendments specifically . In other words: is are the
determinations required for the validity objections discreet from the those
required for the amendments sought ?
i) As the continuing invalidity objections in Deton did not relate to the
amendments sought specifically, a decision to allow such amendments,
would not be finally determinative of any issue raised in the pending
proceedings.
ii) Simply put, a s is the case with any separation of issues in terms of R33(4) ,
a court can only rule that issue s should be decidedly separately if those
issues are, in fact, separate issues . If not , that is the end of the enquiry. It
is only in instances where th e first condition precedent is satisfied, that
second condition would become relevant .
b) Second condition: The court in the amendment application can only decline to
entertain an issue so separated, if there are pending proceeding s where such
an issue will be fully ventilated and finally dispose d of.
i) If there are no pending proceedings to which the issue can be deferred ,
the refusal to consider such an issue would be tantamount to a dismissal
thereof.
ii) If there are pending proceedings, the nature of such proceedings must
allow for the final determination of issue as it has been raised before the
court in the amendment application.
37) For the sake of convenience and structure, I have consider ed the arguments
raised in casu with reference to these two conditions below.
11 Molotlegi v Mokwalase 2010 JDR 0360 (SCA)
First condition : Are the issues discreet?
38) From a plain reading of how Vesper has framed its continuing invalidity
objection s, to my mind, it is clear that the validity challenges relate to the
amendments specifically (claims 1 and 15) and not just the patent generally.
39) However, it seems that Timrite has furthered its argument , in relation to the
preliminary point , on the basis of a general challen ge. I note, f or instance, in the
replying affidavit, it is state d that:” In this case the validity of the patent is already
the subject of debate in the declaration application and is not specifically
pertinent to the amendment application itself. ”12 Vesper has not directly
challenged this contention and has focused its argument on the second condition.
40) Though not pertinently stated, Timrit e’s argument s in relation to the irrelevance of
existing invalidity , seem to have been made within the general context of
determining whether the issues are discreet and can be conveniently separated.
Whether the argume nt is brought on the basis that the challenge does not relate
to the amendments specifically or whether it is brought to substantiate same , as
will be shown below, does not effect my analysis thereof.
41) Before delving into the specific line of reasoning employed, it is necessary to
address the following statement contained in Timrite’s heads of argument:
“Patent amendment proceedings are, however, intended to be kept simple. The
Supreme Court of Appeal [in Bateman] has said [in paragraph 7] that if the
barrier to obtaining a patent is low, and the patentee does not need to
demonstrate validity to either obtain a patent or sue for infringement,
amendment proceedings should unfold on a similar basis.13” [insertions my
own]14
42) The dicta in Bateman needs to understood within context:
a) In deciding an objection based on lack of full reasons, the SCA found, in
paragraph 5, that there is no a duty on an applicant, in formulating the
reasons, to “...identify that which he accepts forms part of the prior art and
which necessitates the amendment, because without the identification of the
12 Replying affidavit : Mr Mukondeleli para 4.2
13 First and Second Applicant’s heads of argument, para 25 (Case Lines 07 -13)
14 In the heads of argument, the footnote to the submission is Bateman Equipment Ltd v Wren Group (Pty)
Ltd 2000 1 SA 649 (SCA) para 7. The insertions incorporate for ease of reference this authority.
prior art potential objectors will not know whether the patentee has achieved
the object of the amendment ” and, in paragraph 6, that “(w)hether the
patentee has failed in achieving its object is for the objector to establish .”
b) It is within this context that the SCA then in paragraph 7 states:
“[7] The nature and object of amendment proceedings must be seen in the
context of our patent system as a whole. Ours is a non examining country
and an alleged inventor is entitled to a patent for his supposed invention
without having to satisfy anyone of its merit or validity. He does not have to
give any reasons for his choice of wording. Should he sue for infringement,
he has no duty to assist the alleged infringer in establishing whether his
monopoly is valid or not. Why should he be saddled with a burd en if he
wishes to reduce the scope of his protection in an attempt to render the
patent valid, while in obtaining or enforcing a monopoly he bears no similar
burden?”
c) The dicta therefore relates to the nature and sufficiency of the reasons to be
provided in an application to amend. At best for Timrite, the dicta can be
extrapolated to, within the context of determining a continuing invalidity
objection, mean that the on us is on the objector to prove existing invalidity. It
is not authority for Timrite’s, ‘irrelevancy of invalidity’ argument.
43) The argument seems to an attempt to , by way of syllogistic reasoning ,
extrapolate from the principle that pre -amendment validity is generally not a
barrier to amendment, authority for the submission that this Court may grant the
amendments without making any determination in respect of the continuing
invalidity objection fir st. However, a s is usually the case with syllogisms,
argument relies on a series of sequential logical fallacies or legal errors to reach
this conclusion.
44) For the sake of brevity, I will repeat Timrite’s arguments (paraphrased for clarity)
as they were developed in its heads of argument in italics and, where appropriate
comment on the logical fallacy, as the case may be, applicable to that stage of
the development of the argument:
a) Existing invalidity is not a barrier to an amendment . Therefore, even if
Vesper’s contention that the patent in its unamended form is invalid was
correct, it would not be a barrier to amendment... Existing invalidity would only
be a barrier to amendment if, for instance, the objector proves that the
patentee has with knowledge of the invalidity, sought to enforce the patent.
This statement is legally unsound . It elevates a principle of general application
to that of an absolute rule , by removing ignoring the context within which the
challenge to existing invalidity is to be considered.
In casu, it would be a barrier if the amendments sought do not cure the
invalidity.
b) Existing invalidity would only be a barrier to amendment if, for instance, the
objector proves that the patentee has with knowledge of the invalidity, sought
to enforce the patent.
Apart from the obvious contradiction to the first sentence supra , this
submission would be correct if the invalidity was cured by the proposed
amendments .
However, within the context of the present challenge to the post amendment
validity, this statement in fact contradict s Timrite’s contention that existing
invalidity is not a barrier to amendment:
Timrite accepts that:
(Existing invalidity) + (Undue delay) = Barrier
but also seeks to persuade this Court that existing invalidity is not a barrier to
amendment , despite the fact that Vesper’s continuing invalidity objectio n is
literally that:
(Existing invalidity ) + (amendments fail to cure ) = Barrier
c) In casu, Vesper’s allegation that Timrite sought to enforce an allegedly invalid
patent, does not make pre amendment validity relevant to this application.
The objection of continuing invalidity depends on knowledge of invalidity. At a
minimum Vesper would have to show that Timrite unreasonably shut their
eyes to the truth, namely that the patent was invalid.
- The implication is that if Vesper proves Timrite unreasonably shut their eyes
to the truth , this court should hear the continuing invalidity objection (as
existing invalidity would then be relevant to the current pr oceeding s). In other
words, the continuing invalidity objection (hurdle B) should only be determined
if Vesper succeeds with it hurdle C objections , which it can only rely on after
hurdle B is determined... The broader implication hereof is that a court may
have regard to factors that would influence the exercise of its discretion to
refuse an amendment that is otherwise in order (hurdle C) at a stage when
the prerequisites for the exercise of such a discretion have not yet been met.
- The patently incorrect submission that the “ objection of continuing invalidity
depends on knowledge of invalidity “ illustrates just how far off the garden
path these errors and logical fallacies have caused Timrite to stray.
45) Accordingly, t he irrelevance of existing invalidity argument does not support the
contention that the issues are discreet and can therefore be conveniently decided
in the pending forum.
46) However, previously noted, Vesper did not directly challenge Vesper’s statement
regarding the generality of the validity challenge and the arguments presented by
both parties centred around the second condition precedent (the nature of the
pending proceedings) .
47) As such, i n fairness to the parties and, in the event that I am incorrect in either
my interpretation of the conditions precedent or the specificity of Vesper’s
invalidity challenge , I will also consider the preliminary issue on the basis of the
dispute as framed by the parties .
Second condition: Are there pending proceedings?
48) According to Timrite, a refusal to consider the continuing invalidity argument at
this stage, would not prejudice Vesper. It argues that t he validity of the patent pre
amendment will be tested in the declaration application. As to post amendment
validity , as patents are presume d to be valid and can be enforced without proving
validity, any challenges to the validity of the patent in its post amendment form,
can be raised by Vesper (or any other party) as and when Vesper decides to
enforce the (amended) patent . During argument, it was confirmed that Timrite
intends to bring a counter application for infringement in response to the
declaration application. In that counter application it will rely on the amended
claims and it is at that stage, that Vesper would then be able to attack the validity
of the patent in its amended form.
49) Vesper argues that the future proceedings in casu, unlike , for instance ,
applications for revocation, are not proceedings where the patent in its amende d
form will be challenged .
a) The declaration application only relates to declaring non infringement of the
patent in its current , unamended, form. Regardless of Timrite’s intentions to,
in future, launch infringement proceedings based on the amended patent , the
fact remains that the present application for amendment is currently the only
proceeding where the validity of the patent post amendment has been
challenged.
b) As such, there are no pending proceedings that will be determinative of the
requirements for a valid objection of continuing invalidity : namely, whether
Timrite ’s patent in its current form is invalid and, if so, whether the proposed
amendments cure th e invalidity or not.
50) To my mind , Vesper’s argument in relation to the nature of the pending
proceedings implicitly raise a further consideration that militates against granting
the amendments and ‘postponing’ the issue of continuing invalidity. As submitted
by Vesper , its objections based on culpable delay and reprehensible conduct
relate to validity of the patent in its current (unamended) form and the delay and
conduct of Timrite vis a vis seeking an amendment of the current form . Once the
amendments are granted, any future infringement proceedings or challenges to
Timrite ’s enforcement of the patent, will be based on the patent in its amended
form. It would not be open to that future forum to retrospectively consider whether
these objections were valid ly raised .
51) That these objections should be decided at the time of the amendment
application , is for instance evidenced from the remainder of judgment in Deton .
Van Dijkhorst J, ‘postpon ed’ the continuing invalidity objections (which were not
raised in relation to any of the amendments sought) to the revocation
proceedings and then called for oral evidence and subsequently proceeded to
decide the objection of culpable delay raised by the Respondent in relation to
specific amendments soug ht by the Applicant to cure potential invalidity as a
result of prior art.
52) . I am accordingly in agreement with Vesper’s contention that there are no
pending proceedings where the issues of continuing invalidity, as well as culpable
delay and reprehensible conduct will be determined
53) I pause here to note that t he issues identified supra, illustrate , in general, the
problematic nature of separating issues that are not in fact separate issues . They
also support a finding that the validity objections raised herein are not general,
but relate to the amendments specifically ...
Finding iro Hurdle B objection
54) In any event, r egardless of which interpretation of the conditions precedent was
followed or whether or not the challenge was general or amendment specific, the
conclusion remains the same : Vesper’s contention that the continuing invalidity
objections cannot and/or should not be decided separately from the application to
amend , is correct .
55) I however disagree with the parties ’ commonly held contention that once th is
preliminary point in relation to B has been decided, this court m ust proceed to
determine whether the amendments sought should be granted. The parties have
typecast Van Dikhorst J’s reasoning as being solely applicable within the sphere
of continuing validity objections. I do not agree
Hurdle A:” Lack of fair basis ”
56) The commentary on Deton in Burrell’s South African Patent and Design Law15
encapsulates the essence of Van Dijkhorst J’s reasoning
"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 ,” [Underlining my own]
57) Van Dijkhorst J’s reasoning was based on the sensibility and practicality of
deciding overlapping issues simu ltaneously. The fact that in Deton the reasoning
related to only the overlap of issue s pertaining to continuing invalidit y, does not
mean that the reasoning applies exclusively to issues of validity. I n Deton , Van
Dijkhorst J was not called upon to determine an unfair basis objection . His
reasoning makes it pertinently clear that it applies to similar issues raised in
separate proceedings and that, in the matter before him the similar issues
happened to relate to continuing invalidity:
15 Burrell’s South African Patent and Design Law, 3rd Edition, p 437
“I know of 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 that
matter where it would be natural and more convenient to do so, provided the
ruling would not deny the party a substantive (as opposed to procedural) right .
In the present case, the deferral of the ad judication on the grounds of
revocation to the application for revocation affects the procedure but does not
extinguish any substantive right the responden t may have. ” [underlining my
own]
58) As indicated previously, a t the commencement of the hearing, I had referred
counsel to Antel16, where Fourie J declined to decide either objection raised (and
consequently postponed the application altogether) . His reasoning therein also
lends creedence to the aforementioned interpretation of Van Dikhorst J’s
reasoning as relating to separation of issues and not specifically only separation
of continuing invalidity issues:
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 fai rly 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 onl y overlapping, but that
they are also intertwined to such an extent that they should not be dealt with
separately.17 [Underlining my own]
59) The overlap in relation to hurdle A in casu is obvious :
a) Vesper has indicated that “...one of Vesper’s primary arguments in the
declaration application is that the Vesper bag does not include a strap
16 Antel and Another v Virtual Consulting Engineers (Pty) Limited and Others (63720/12) [2014] ZAGPPHC
476 (27 February 2014)
17 Antel and Another v Virtual Consulting Engineers (Pty) Limited and Others (63720/12) [2014] ZAGPPHC
476 (27 February 2014) at para 6
because the "dividing panel" in the Vesper bag is of the same length and
width (i.e. not narrower) than the bag itself;"
b) By way of comparison, Vesper ’s lack of fair basis objections are directed at
amendments which , prima facie , would, if granted , effectively neutralise this
primary argument in the declaration application. For instance:
i) Proposed new claims 16, 18 and 21 seek to introduce a new feature into
the claims of the patent, namely that " the or each strap ' ‘comprising a
reinforcing web constituted by a layer of fabric". Vesper argues that the
patent prior to amendment did not disclose, or teach, that the "strap" could
be a reinforcing web constituted by a layer of fabric.
ii) Proposed new claim 19 includes the (similar) limitation that the " first yield
control elemen t" comprises ‘a reinforcing web constituted by a layer of
woven polypropylene fabric’ . Vesper argues that:
“For the reasons already explained the first yield control element cannot
be both a strap and a layer of woven polypropylene fabric because they
are different things. A strap is, by definition, narrower than the width of the
sheet material of the bag, while there no such l imitation in respect of the
reinforcing web that is constituted by a "less open" layer of woven
polypropylene fabric. ”
and that:
“There is thus no disclosure in the patent, in its current form, of a strap
which is also a reinforcing web constituted by a layer of woven
polypropylene fabric. The new feature of claim 19 is not therefore fairly
based on the teaching of the specification prior to amendment. ”
60) Van Dijkhorst J’s warning in Deton applies with equal force to determinations to
hurdle A determinations : A court in an amendment application should be mindful
of the fact that its determination s could effectively , through issue in estoppel,
result in the pending declaration application proceedings being usurped and
being rendered irrelevant . During the hearing counsel for both parties all but
admitted that if I find that there is fair basis for the amendments sought, it would
effectively dispose of Vesper’s current grounds for alleging non infringement in
the declaration application.
61) Ironically therefore , Timrite ’s submission in support of postponing the continuing
invalidity objection supra, is more appropriate within the current context: The
determination of the unfair basis objection “... should remain where it belongs: in
the declaration application. “
FINDING
62) Given the aforementioned, the position is as follows :
a) The amendments sought cannot be granted without a determination of the
continuing invalidity objection.
b) The continuing invalidity objection must therefore be determined
simultaneously with the lack of fair basis objection.
c) However, f indings made in the amendment application in relation to the lack of
fair basis objection will be determinative of the noninfringement grounds,
which have been pertinently raised in the declaration application.
63) As already indicated, this court has the discretion to deal with the application for
amendment as it deems fit and its discretion in relation to the procedural aspects
of the application (as opposed to substantive aspects such as the discretion to
refuse to grant the amendments) is limited only to the extent that it must be
exercised judicially.
64) In casu, I have, inter alia, considered the following factors in exercising my
discretion:
a) If the amendment application is decided prior to the declaration application,
there is a real risk that th ose proceedings will be rendered irrelevant.
b) A postponement of the application in toto would not have any effect on
Timrite’s substantive right to apply for and be granted an amendment. I also
cannot fathom any effect it would have on Vesper’s rights as they would be in
the exact position they were in prior to the amendment application – i.e they
have applied for a declaration of non infringement.
c) Timrite’s reasons advanced for the amendment s, as well as Vesper’s
objections to such amendments, both have their genesis in Mr Keen’s
evidence contained in his declaration affidavit. That affidavit however also
deals with evidence not addressed in the amendment application. Would it be
appropriate to consider the amendments without considering Mr Keen’s
evidence as a whole? Whilst Timrite has dealt with some of the allegations
raised in Mr Keen’s declaration affidavit in its founding affidavit herein , the fact
remains that it has not filed an answering affidavit dealing with the totality of
Mr Keen’s submissions in the declaration affidavit.
d) Not only would it be more natural and convenient for the overlapping issues in
general to be determined simultaneously with the declaring application, but, in
postponing the application in toto, the (very valid) problems raised by Vesper
in relation to separating the determination of continuing invalidity from the
amendment application, would also no longer arise .
65) I accordingly make the following order:
ORDER
1. The application to amend the complete specification of South Africa patent of
addition no. 2010/06044 entitled 'Yielding Mine Support' (“the application to
amend”) is postponed .
2. The application to amend may be set down for determination simultaneously
with the application for declaration of non infringement brought under case no
2023 -063620 , subject to the discretion of the court in that application.
3. Alternatively to ( 2), in the event that the a pplication to amend is not
determined simultaneously with the application in case no 2023 -063620, the
application to amend shall not be set down before a final determination has been
made in the application brought under case no 2023 -063620.
4. The costs of the application to amen d as well as any wasted costs occasioned
by the present hearing , are reserved .
5. If the application is withdrawn or, if applicable, the Applicants fails to within 30
days of the final determination referred to in (3) apply to set the application down
for hearing, the Respondents may set the application down for the determination
of the costs reserved per (4).
Postcript
The parties are owed an apology for the delay i n the handing down of the judgment.
The judgment , as set out above , was, according to my records, finalised in the first
week of December 2024. It was only when, at the end of May 2025, I attempted to
find the Saflii reference for the judgment that it became clear that I had noted the
judgment as" finalised" despite not forwarding same to the registrar for distribution.
The already inexcusable delay is therefore also inexplicable. I can only express my
utmost regret for the oversight in the hopes that my apology will be accepted by the
parties
Date reserved: 24 October 2024
Date handed down: 11 June 2025
APPEARANCES:
FOR THE APPLICANTS: ACTING JUDGE OF THE HIGH
COURT, GAUTENG DIVISION ,
PRETORIA
ADV P GINSBURG SC, instructed by ADAMS & ADAMS
FOR THE FIRST RESPONDENT
ADV GAVIN MARRIOTT, instructed by SPOOR & FISHER