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[1993] ZASCA 169
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Water Renovation (Pty) Ltd v Gold Fields of SA Ltd (481/91) [1993] ZASCA 169; 1994 (2) SA 588 (AD); [1994] 2 All SA 33 (A) (12 November 1993)
CASE NO. 481/91 J VD M
IN THE SUPREME COURT OF SOUTH AFRICA
(
APPELLATE
DIVISION
)
In the matter between:
WATER RENOVATION (PTY)
LTD
APPELLANT
and
GOLD FIELDS OF SA LTD
RESPONDENT
CORAM
: BOTHA, E M GROSSKOPF, MILNE, JJA et
NICHOLAS, HARMS, AJJA
HEARD
: 25 FEBRUARY 1993
DELIVERED
: 12 NOVEMBER 1993
JUDGMENT
HARMS, AJA:
The appellant, Water Renovation (Pty) Ltd ("the patentee"), is a company
involved in the treatment
2
of industrial effluent. It does basic research and development work and
also sells industrial filtration plants. Its managing director
and sole
shareholder is Mr R G Batson, a civil engineer. Batson invented a method and
means to separate solids from a liquid in which
they are suspended and the
patentee, as assignee of the invention, filed an application for an invention
entitled
Separation of a Suspension into its Component Parts
on 4
November 1986. The application was accompanied by a provisional specification
(number 86/8409). As is customary, the provisional
specification contained no
claims but a description of the invention and a drawing.
The purification of mine water containing suspended solids is a major
problem in the mining industry. The research organisation of
the Chamber of
Mines ("Comro") has a water treatment division and it maintains a facility for
the testing of
3
water treatment devices and for research and development into mine water
treatment processes at the ERPM gold mine at Boksburg. Its
manager at the time
was Mr W Pulles, a scientist. Pulles was aware of the fact that Batson had
published an article stating that
he had invented a purification system useful
to the mining industry and that the patentee was inviting inquiries from
interested
parties. Already during November 1986, he approached Batson and
informed him of Comro's interest. The outcome was a loose arrangement
whereby
the patentee agreed to build two substantially identical pilot plants, one to be
operated and tested by Comro at ERPM and
the other by the patentee at its
premises. That was done and certain development work followed. The results of
the Comro tests were
published when Pulles delivered a paper called
Suspended
Solids Removal from Mine Waters using Floating Media Separation and Crossflow
Microfiltration
("the Pulles paper") on 13
4
November 1987 at a seminar organised by Comro.
The patentee filed its complete specification (number 88/0772) on 2
February 1988. In terms of
section 31(1)(a)
of the
Patents Act 57 of 1978
it
claimed the date of the provisional specification, 4 November 1986, as its
earliest (and only) priority date. (The relevance of
the priority date is, in
the context of this case, that the novelty or inventiveness of a claimed
invention is assessed as on the
day immediately before that date:
section 25(5)
and (10) of the Act). A patent was granted in the form applied for and it was
sealed on 28 June 1989.
The respondent, Gold Fields of SA Ltd, wished to utilise aspects of the
invention as claimed. It could not reach an agreement with
the patentee and on
27 October 1989 launched an application for the revocation of the patent. Its
case, in essence, was the following:
5
(i) The development work at ERPM during the period between the filing of
the provisional and complete specifications resulted in a
new apparatus ("the
new configuration").
(ii) This configuration is the subject of claims 21 to 25.
(iii) It dit not form part of the disclosure contained in the provisional
specification.
(iv) It became part of the state of the art when it was disclosed in the
Pulles paper.
(v) In any event, Batson and Pulles were the co-inventors of the new
configuration.
Therefore, the respondent alleged that the invention claimed in these
claims lacked novelty; that the patentee was not a person entitled
to apply for
the patent; that the claims were not fairly based on the
6
matter disclosed in the provisional specification; and that the
prescribed declaration contained false representations (namely that
Batson was
the sole inventor of the new configuration and that to the belief and knowledge
of the patentee there were no lawful grounds
for revocation).
In answer to the application for revocation the patentee filed a
counterstatement (which is in the nature of a plea). It admitted
that claims 21
to 25 were not fairly based on the matter disclosed in the provisional
specification and that these claims were only
entitled to the priority date of
the later complete specification. It denied however that the Pulles paper, had
formed part of the
state of the art before the date of the complete
specification, that Pulles was a co-inventor of the new configuration and that
any
misrepresentations had been made.
An application in terms of
section 51(9)
of
7
the Act for the amendment of the patent was filed concurrently. The
essence of the proposed amendment was to remove from the body
of the
specification any reference to the experiments conducted at ERPM and to
introduce a limitation in the nature of a disclaimer
into claim 21 (and
consequently into its dependent claims 22 to 25). The limitation will be
referred to as "insert A". The revocation
proceedings were stayed pending the
final determination of the amendment application. Factual disputes arose from
the affidavits
and a number of issues were referred for oral evidence by
MacArthur J, sitting as Commissioner of Patents. Plewman J, in the same
capacity, heard the matter and dismissed the application for amendment. He
granted the patentee leave to appeal to this Court. Hence
the present
appeal.
An application for the amendment of a patent is usually based on the
ground that the patent in its
8
unamended form is, or may be, invalid. The grant of an amendment is a
discretionary matter and is dependent, among other things, upon
whether the
application complies with the provisions of
section 51
of the Act, whether it
can attain its object (for example, remove the alleged invalidity), and whether
the patent after amendment
would be otherwise valid. See, in general,
Willows
Francis Pharmaceutical Products Ltd v Aktiebolaqet Astra Apotekarnes Kemista
Fabrieker
1960 (3) SA 726
(A) 738C-H;
De Beers Industrial Diamond
Division (Pty) Ltd v General Electric Company
1988 (4) SA 886
(A)
896E-I.
In regard to the onus of proof it was argued on behalf of the patentee
that the objector to the. grant of an amendment is burdened
with the onus in
respect of all the issues which may arise in the application, while respondent's
counsel argued to the contrary.
It may well be, however, that in relation to
some of the issues
9
the onus rests on the applicant for amendment, while in relation to
others it rests on the objector. For instance, where the objection
to an
amendment is based on the ground of continuing invalidity of the patent, it
would seem that the onus lies with the objector
(see the
De Beers Industrial
Diamond Division
case
supra
at 901 A-D); but, on the other hand,
where the issue is whether there has been due compliance with the statutory
requirements for
the application (e g as to the furnishing of "full reasons" for
the amendment) and a factual dispute arises in that connection, it
is arguable
that the patentee bears the onus (cf
Interfelt Products (Pty) Ltd v Feltex
Ltd
1972 (3) SA 335
(T) 343A-B; and cf
Smith Kline & French
Laboratories Ltd v Evans Medical Ltd
[1989] FSR 561
569;
Hsiunq's Patent
[1992] RPC 497
(CA) 523 lines 1-4). There is yet a further possible category
of facts namely those that relate to the exercise of the court's discretion,
such
10
as undue delay. The
Interfelt Product
case held that the objector
bears the onus in that situation. It is not necessary, however, to pursue this
enquiry, for in the present
case the issues can be resolved without resort to
the incidence of the onus, as will appear below.
In this case the patentee applied for
amendments in order to reduce the ambit of the issues in
the revocation proceedings. In particular, it wished
to remove from contention the Pulles paper so that it
could no longer be relied upon to destroy the novelty of
claims 21 to 25. In accordance with the provisions of
section 25(5)
of the Act these claims could have been
anticipated by the Pulles paper only if -
(a)
the priority
date of the claims was the date of the complete
specification;
(b)
the Pulles
paper became part of the state
of
11
the art before that date; and
(c) the paper disclosed the invention in its essential integers as
claimed in those claims.
In its affidavits the patentee admitted (a), denied (b), and did not deal
with (c) . It applied for the introduction of insert A "to
ensure that [these
claims are] distinguished over the disclosure of the Pulles paper despite my
[Batson's] believing that the Pulles
paper did not form part of the state of the
art before the priority date of [these claims]". In this regard the respondent's
contention
that insert A "does not in substance distinguish over the disclosure"
contained in the Pulles paper. The patentee did not place this
contention in
issue. In relation to anticipation, MacArthur J referred only issue (b) above to
oral evidence.
12
At the hearing before Plewman J counsel for the patentee stated in
opening that, although there was an admission in the affidavits
concerning (a)
above, the patentee was not bound by it and that he (counsel) would present a
contrary argument on the point. In the
course of the evidence counsel admitted
(b). During argument in the court
a quo
and in this Court items (a) and
(c) were placed in issue on the basis that they related to legal contentions in
respect of which
a party is not bound by admissions made in its affidavits.
Plewman J found that the issues had been fully canvassed and that the
respondent
was consequently not prejudiced by the patentee's change of heart. (Counsel for
the respondent did not challenge this
finding during the appeal.) Plewman J held
further that the claims in question were not fairly based on the matter
disclosed in the
provisional specification, and found consequently that the
patentee's admission relating to the priority
13
date of the claims had been made correctly. On that basis it was not
necessary for him to decide whether the patentee was bound by
the admission and
he expressed no opinion in that regard.
For the purpose of deciding the appeal it
is
again not necessary to decide whether the patentee
is
bound by its admission, but the view I take of
this
aspect of the matter differs from that of the court
a
quo
. It can be stated briefly, as follows.
The
express object of the application for amendment was
to
remove a ground for revocation; its object was not
to
litigate the validity of the unamended
specification.
Consequently, in order to assess whether
the
introduction of insert A can achieve the object
of
distinguishing claims 21 to 25 from the Pulles paper,
it
is proper to assume the matters stated in (a), (b)
and
(c) above. In other words, for the purposes of
the
exercise it does not matter whether (a), (b) and (c)
14
have been established whether by way of admission or otherwise. If it is
found that insert A cannot achieve the intended object, the
amendment will serve
no purpose and ought for that reason not to be granted. On the other hand, if
insert A does serve to distinguish
the claims from the Pulles paper, the amended
claims will be novel in relation to the Pulles paper, irrespective of whether
(a),
(b) and (c) are established.
The court
a quo
refused the amendment on the grounds
inter
alia
that insert A does not distinguish the claims in question from the
Pulles paper and that the amendment sought was in any event in
the nature of a
stratagem, which justified the court in declining to exercise its discretion in
favour of the patentee.
In order to understand the nature of the proposed amendments and their
effect, regard must first be had to the description of the
invention. The
invention as described in both the provisional and the
15
complete specifications has three aspects namely (i) a method of, and
(ii) a separating apparatus for, separating solids ("particulate
material") from
the unfiltered ("carrier") liquid in which they are suspended, as well as (iii)
a feed means for feeding the suspension
into the separating apparatus. This
trichotomy is also reflected in the claims : claims 1 to 6 are method claims; 7
to 16 claim a
separating apparatus and 17 to 25 the feed means. So, too, the
three omnibus claims : 26 deals with the method, 27 with the separating
apparatus and 28 with the feed means. The three aspects are nevertheless closely
interrelated. The description of, and claims relating
to, aspect (ii) always
incorporate aspect (iii). And the method, aspect (i), employs aspects (ii) and
(iii).
In order to explain the invention as set out in the provisional
specification I intend using the apparatus as described and illustrated
in its
figure 1.
16
I am conscious of the fact that figure 1 represents a preferred
embodiment only but, for present purposes, it is of no consequence.
The
separating apparatus (aspect (ii)) has two basic elements namely a vessel and a
feed means (aspect (iii)). The vessel consists
of a vertical cylindrical body.
It is divided operationally, but not mechanically, into three zones. The upper
zone collects the
clarified liquid. The lower zone gathers the separated solids.
The intermediate zone is called the feed zone. It is the function
of aspect
(iii) to feed the suspension into the feed zone.
The feed means, once again according to figure 1, consists of a cylinder
of a diameter smaller than that of the vessel. This cylinder
is located within
the intermediate feed zone of the vessel. Its upper end is open and its tapered
lower end has an opening for the
discharge of solids. In use, the
17
untreated liquid is fed into this cylinder. It is there that the
separation takes place with the assistance of flocculants. Agglomerated
particles are carried out of the cylinder and settle down in the lower zone of
the vessel. The purified liquid is withdrawn from
its upper zone.
The complete specification contains the same drawing, figure 1, and a
similar description of this embodiment and aspect (iii) thereof
is claimed in
(at least) claims 17 and 18. It is not in issue that these claims (among others)
are fairly based upon the provisional
specification and are therefore entitled
to its priority date. They are accordingly unaffected by the Pulles
paper.
The complete specification in addition contains a detailed exposition of
the new configuration and calls it "a second embodiment"
of aspect (iii). It
describes the tests that were conducted at ERPM and uses
18
parts quoted verbatim from the Pulles paper for
this
purpose. In this embodiment the feed means has a
second
cylindrical member located at least in part within
the
first cylinder of the feed means. The discharge
outlet
of the feed conduit is within the second
cylindrical
member. The specification describes, by way
of
example, two feed conduits: the one is co-axial
with
the second cylindrical member and the other
extends
radially inwardly through the side walls of the
vessel
and the two cylinders. This second embodiment
of
aspect (iii) is then claimed in claims 21 to 25.
As
stated, the respondent alleged (and the
patentee
initially admitted), that this embodiment is not
fairly
based upon the provisional specification and
accordingly
that these claims are only entitled to the priority
date
of the complete specification.
It suffices for purposes of this judgment to quote claim 21 only. For
ease of reference it is
19
reproduced in its present and proposed amended from. The words underlined
represent insert A and the words within brackets are to
be deleted.
"21. Feed means according to Claim 18, which includes a second
cylindrical member located at least partially within the other or first
cylindrical member,
the feed conduit having a discharge outlet including an
end portion extending co-axially with and opening within the second cylindrical
member
, [with the conduit discharge outlet being located in the second
cylindrical member,] the secondary cylindrical member having a smaller
cross-sectional area that the first cylindrical member and providing a primary
region with the sub-zone, with the remainder of the
first cylindrical member
constituting a secondary region with the sub-zone."
Insert A is the most important aspect of the amendment applied for, but
before I deal with it, it will be convenient first to dispose
of another feature
of the application. As mentioned earlier, an amendment
20
is sought to the body of the specification by the deletion of the
description of the tests conducted at ERPM. In his affidavit, Batson
stated that
these tests were conducted by Pulles and his co-workers on an apparatus invented
by himself (Batson). He proceeded to
say that the full reason for the amendment
is that whereas he regards himself as the sole inventor, he wishes to delete all
reference
to the tests conducted by Pulles, presumably to remove doubt as to
Pulles's co-inventorship. Pulles, in his answering affidavit,
pointed out that
some of the passages to be deleted were taken from his paper and suggested that
Batson probably plagiarized his
paper. In reply, Batson denied the second
statement and stated that since the testing was done on his invention, he was
entitled
to refer to the test results.
The facts as they unfolded during evidence have a different flavour.
During preparation of the
21
complete specification Batson handed a copy of the Pulles paper to his
patent attorney for inclusion in it. Batson was advised to
obtain Comro's
consent thereto. He considered the possibility that the consent could be refused
and decided, without obtaining any
further advice, to proceed without it.
Passages were clearly plagiarized. Plewman J refused to allow this part of the
amendment on
the grounds that the Pulles paper anticipated the contentious
claims prior to the amendment and that an elimination of all references
to the
Pulles paper and the ERPM pilot plant test could not change that fact.
The patentee is in truth embarrassed by the inclusion of these passages.
The embarrassment was caused by its own doing. Batson received
sound legal
advice and he chose to ignore it. The inclusion was intentional with knowledge
of a risk involved. The deletion will
not remove the embarrassment
because,
22
insofar as the passages could be used as evidence of Pulles's
co-inventorship, they can still so be used. Co-inventorship is a matter
of fact
and any admission by a patentee, even in a specification prior to amendment, may
be admissible evidence. It is not the patentee's
case that this amendment is
required to validate the patent. There was, consequently, good ground for a
refusal of this part of the
application in the exercise of the court's
discretion. Compare
Union Carbide
(Bailey & O'Conner's Application
) [1971] RFC 854. Also this
Court cannot interfere with the exercise of a discretion except on certain
well-known limited grounds.
See e g
Holtite Ltd v Jost (Great Britain)
Ltd
[1974] RPC 81
;
Ex Parte Neethlinq and Others
1951 (4) SA
331
(A) 335 D-E. It was not argued that any such ground was
present in this case.
Turning then to the amendment relating to
insert A, it will be immediately apparent from a reading
23
of claim 21 that the unamended claim covers a feed conduit of any
configuration and that it is immaterial whether the conduit extends
radially
inwardly through the side wall (as shown in the Pulles paper) or whether it is
co-axial with the second cylindrical member
(as shown in figure 4 of the
complete specification) or whether it extends through the side wall and then
takes a turn at right angles
in a vertical direction (as is shown in figure 1 in
relation to the first embodiment). The stated object of insert A is to limit
the
claim to the figure 4 configuration.
It was argued on behalf of the patentee that if this amendment were
allowed, insert A would be an essential integer of the amended
claims and that
since it is not to be found in the Pulles paper, the latter cannot anticipate.
The respondent's undisputed contention
that insert A does not in substance
distinguish over the Pulles disclosure is, according to
24
the argument, beside the point because a patentee is entitled to make by
the words used an integer essential even if it is from a
practical point of view
inessential. If the chosen integer is not to be found in the cited document, so
the submission proceeded,
there can be no anticipation in the same way as
an
alleged infringer cannot escape liability by replacing
or substituting that integer.
Whether insert A would be an essential
integer, depends on the interpretation of the complete
specification in its proposed amended form. Compare
Gentiruco AG v Firestone SA (Pty) Ltd
1972 (1) SA 589
(A) 646 C-D. And, as counsel stressed, a specification
has one meaning only, irrespective of whether the issue
is invalidity or infringement. Compare
Veasey v Denver
Rock Drill and Machinery Co Ltd
1930 AD 243
at 280.
Also, in construing the specification, no regard should
be had to what the infringer has done (
Selero (Pty) Ltd
25
and Another v Chauvier and Another
1984 (1) SA 128
(A) 137 F-G),
and, more appositely in this case, to what the prior art described, save to
define and delimit the areas of dispute.
In
Stauffer Chemical Co
& Another v Safsan Marketing and Distribution Co (Pty) Ltd & Another
1987
(3) SA 331 (A) 346I-347D, Corbett JA said the
following:
"To ascertain what are and what are not the essential features or
integers of a claimed invention the specification must be read and
interpreted
purposively or realistically, with the understanding of persons with practical
knowledge and experience of the kind of
work in which the invention was intended
to be used and in the light of what was generally known by such persons at the
date of the
patent (see the
Frank and Hirsch
case
supra
at 762-3;
the
Marconi
case
supra
at 217-18; the
Catnic
case
supra
at 243), which date by our law is the priority date of the claim
(see Burrell (
op cit
para 5.23 at 246)). Obviously, the fact that a claim
incorporates a particular feature
26
does not alone suffice to make that feature an
essential one. Otherwise the problem would not arise. In general, if the feature
is
in fact essential to the working of the claimed invention, then it must be
regarded as an essential feature. On the other hand, a
patentee may indicate in
his specification, either expressly or by implication, that he regards a
particular integer as essential;
and in that event it must be treated as
essential and it matters not that it may not be essential to the working of the
invention.
Where, however, a feature is not essential to the working of the
invention and the patentee has not indicated that he regards it
as an essential
integer, then in general it may be treated as unessential and an alleged
infringer may be held to have infringed
the claim notwithstanding that his
product or process does not incorporate that feature or substitutes an
equivalent for it (see
the
Van der Lely
case
supra
at 76 lines
29-30;
Catnic
case
supra
at 226-7, 228
per
Buckley LJ in CA
and at 243
per
Lord Diplock in HL)."
(The authorities referred to are
Frank and Hirsch (Pty) Ltd v Rodi
& Wienenberger Aktienqesellschaft
1960 (3) SA
27
747 (A);
Marconi v British Radio Telegraph and Telephone Co Ltd
[1911] 28 RFC 181;
Catnic Components Ltd & Another v Hill & Smith
Ltd
[1982] RPC 183
; Burrell
SA Patent Law and Practice
2nd ed;
C
Van der Lely v Bamfords Ltd
[1963] RPC 61.)
See also Bodenheimer and Beton
Infringement by Equivalents in the United States and Europe : A Comparative
Analysis
[1993] 3 European Intellectual Property Review 83.
It follows from this that the mere presence of insert A in these claims
is not conclusive of whether it is essential to the invention
there claimed. The
conduit may be a necessary integer, but that does not mean that its
configuration is "essential to the invention"
(per Schreiner JA in the
Frank
& Hirsch
case
supra
at 763 A). It is not in dispute that the
configuration of the conduit was at the date of the complete specification, to
the knowledge
of the addressee, in no way essential to the invention.
28
The next leg of the inquiry is whether the patentee, expressly or
impliedly, elevated insert A to an essential integer. Whether the
skilled
addressee, reading the specification in its proposed amended form, in order to
determine whether insert A is an essential
integer, could have regard to the
fact that the integer was the result of an amendment, was not argued. It would
seem as a matter
of principle that the document in its amended form should speak
for itself and that its history would be inadmissible extrinsic evidence.
Compare the
Stauffer
case
supra
at 346 F-G. So, too, the fact that
the reason for the integer is to attempt to distinguish alleged prior art. It
must also be borne
in mind that "(w)hat the patentee intended to claim is
immaterial" (per Van der Heever JA in
Power Steel Construction Co (Pty) Ltd v
African Batignolles Constructions (Pty) Ltd
1955 (4) 214 (A) 225E).
If regard is had to the specification as a
29
whole, it is apparent that the feed conduit performs one function and
that is to transport the untreated liquid to" the inner cylindrical
member of
aspect (iii). The discharge outlet is simply the end of the pipe. Since the
apparatus has no moving parts, it does not
matter what route the conduit
follows. The drawings show three configurations : that of figure 1 has already
been mentioned, namely
a horizontal pipe through the walls of the cylinders and
then bending vertically; the conduit of figure 4 is the co-axial one of
insert
A; and figures 6, 7 and 8 show "a feed conduit 112 extending radially inwardly
through the wall of the vessel". The specification
does not attach any
significance to these configurations and treats them all as equivalents. There
is no indication that in the context
of the new configuration as claimed in
claims 21 to 25 the positioning of the conduit has any importance or that the
patentee believed
that it did. I am therefore of
30
the view that there is not a sufficiently clear indication in the
specification that insert A is an essential integer. That being
so it must
follow that it cannot serve to distinguish these claims from the Pulles paper
and that the amendment ought not to be granted.
As indicated earlier the amendment was also refused in the exercise of
the trial judge's discretion. He said in this regard:
"The evidence of Mr Batson himself establishes that it is quite
immaterial whether the feed is introduced vertically, horizontally
or coaxially
in the claim 21 - apparatus. This means that the patentee is seeking to
introduce an inessential -integer into the claim
in an effort to limit it so as
to avoid an objection of lack of novelty. What is and what is not an essential
integer of a claim
is always a difficult and controversial question. But where,
as here, there is no gainsaying the fact that what the patentee is doing
is to
introduce an inessential feature so as to provide
31
an argument in relation to a future attack on the
novelty the question presents itself in a different form.
Amendment, being a discretionary matter, it seems to me that if an
amendment is truly no more than what may perhaps be described as
a stratagem to
try to save the claim in this way, the court would be justified in refusing the
amendment in the proper exercise of
its discretion. In the present circumstances
this is what I propose to do."
To elaborate, what the learned Judge wished to convey is that a court
can, in the exercise of its discretion, refuse an amendment
if the patentee
attempts to elevate what he regarded as immaterial and what is in fact
inessential, to an essential integer in order
to save the claim. That may
justifiably be termed a stratagem and is to be distinguished from an amendment
by way of a true disclaimer
to save a claim. The approach of the learned Judge
cannot, in my view, be faulted. It is
32
therefore unnecessary to consider, on the assumption that, contrary to my
finding, insert A would be an essential integer, whether
the amended claims
would be non-inventive in the light of the Pulles paper.
The
patentee also applied for an amendment by the introduction of insert A into
claim 12. Claim 12 is not a claim in issue in the
revocation proceedings and the
reason for the amendment was said to be to create consistency between claims 21
to 25 and claim 12.
In view of my conclusion on the former claims, it follows
that this amendment cannot be granted because it cannot effect the consistency
sought.
The last amendment of substance sought relates to the splitting of claims
27 and 28 into four claims, the reason being to ensure that
the new claims 27
and 29 are entitled to the priority date of the provisional, and the new claims
28 and 30 to that of the complete
specification. The old claims claim
aspects
33
(ii) and (iii) respectively "substantially as described and illustrated
herein". Since the provisional specification had one drawing
(figure 1) only, it
is the patentee's case that insofar as these claims relate also to the other
drawings, they are, to that extent,
not fairly based on the provisional
specification. The amended claims will deal separately with figure 1 on the one
hand and figures
2 to 7 on the other. The latter will then have the priority
date of the complete specification.
The respondent did not oppose this amendment and Plewman J, probably by
oversight, did not deal with it expressly. He simply dismissed
the application
in its entirety. It appears that the patentee does not require this amendment in
order to meet an allegation of invalidity.
It is also not necessary as a matter
of law because a claim may anyhow have more than one priority date
(section
33(6)).
The splitting of the
34
claims will also not inform the addressee of the specification that the
patentee is of the view that the new claims 28 and 30 are
not fairly based on
the provisional specification - a view to which he is, on his own case, not
bound. There is thus no good reason
for granting this amendment.
In view of the conclusions reached above it is not necessary to deal with
the other issues decided by Plewman J. Two in particular
were much debated in
argument before this Court: whether claims 21 to 25 were fairly based on the
provisional specification, and
whether Batson and Pulles were co-inventors of
the invention disclosed therein. Counsel for the patentee submitted that this
Court
should express its views on these issues, for two reasons: first, because
the findings of the court
a quo
on these issues would otherwise create an
issue estoppel, and second, because this Court's views would assist the parties
in the
35
future conduct of their litigation. Counsel's invitation must be
declined. As to his first point,
the issues in question are
expressly left undecided by
this Court on the basis that no decision on them is required for the
purpose of determining the fate of the application for amendment
and hence the
outcome of the appeal. At the present stage of the litigation between the
parties these issues are accordingly left
open for consideration in any further
proceedings that may eventuate in the court
a quo
. Since this Court has
the last word, the findings of Plewman J cannot now be regarded as final and
binding on the parties for the
purposes of founding an issue estoppel. As to
counsel's second point, this Court does not sit in an advisory capacity and is
not
called upon to express non-binding opinions on matters pending in a lower
court.
36
In the result, the appeal is dismissed with costs, including the costs
consequent upon the employment of two counsel.
L T C HARMS
ACTING JUDGE OF APPEAL
BOTHA, JA )
) AGREE E M GROSSKOPF, JA )
Case No. 481/91
JUDGMENT
2
NICHOLAS, AJA
I have had the opportunity of reading in
draft the judgment prepared by Harms AJA. I agree with the order which he
proposes. Since,
however, my approach differs from that adopted by my learned
colleague, I have written a separate judgment.
This is an appeal against a judgment of Plewman J sitting as Commissioner
of Patents. In the court
a quo
the present appellant, Water Renovation
(Pty) Ltd ("Water Renovation") applied for the amendment of the complete
specification of
SA Letters Patent No 88/0772 which relates to an invention
entitled "Separation of a Suspension into its Component Parts". The application
was opposed by Gold Fields of South Africa Limited ("Gold Fields"). Conflicts of
fact having arisen on the affidavits filed by the
parties, the matter was
referred by McArthur J, sitting as Commissioner of Patents, for the hearing of
oral evidence on certain specified
issues. The matter then came before Plewman
J
3
who,having heard the evidence, made an order
refusing the application for amendment with costs, but granted leave to appeal
to this
court.
The events which gave rise to the application for amendment had their
beginning in the second half of 1986. In the August 1986 issue
of
The SA
Water Bulletin
there was published a short article by Mr. Richard Guy Batson
("Batson") who was the inventor of the subject invention and the sole
shareholder and managing director of Water Renovation. Batson referred to the
fact that the clarification of water through the process
of chemical dosing and
filtration had received the attention of engineers for over a hundred years. He
now reported the invention
of a separator for liquid filtration which, he
claimed, was the most significant development in water filtration for years.
After
a broad description of the new system (which was described as "our
floating media separator") the article indicated that further
information could
be obtained from
4
Water Renovation.
The article
attracted the attention of Mr. Wilhelmus Pulles ("Pulles"), a scientist employed
on a project on water treatment which
was then being conducted in the
Environmental Engineering Laboratory of the Chamber of Mines Research
Organisation ("COMRO"). Pulles
was interested because this project related
inter alia
to the removal of solids in suspension from water and aqueous
solutions, and he was experimenting with and testing proposals for
the cheap and
efficient removal of solids from liquids. The problem was one which, partly
because of the significant costs involved
(R140 million per annum), had
exercised the South African mining industry for many years.- The finding of a
solution had become urgent
at this time in view of the prospect of the
introduction on the mines of hydro-electric power systems - the presence of an
excessive
concentration of abrasive particles in mine water was likely to be
harmful to the reticulation pipework and the equipment comprising
5
hydro-electric power systems.
On 3 November 1986 Water Renovation lodged at
the
South African Patent Office Application
No 86/8409 together
with a provisional specification relating to an
invention
made by Batson and entitled "Separation of a Suspension into
its component parts". It recited that -
"THIS INVENTION relates to the separation of a suspension into its
component parts. It relates in particular to a method of, and separating
apparatus for, separating particulate material from a carrier liquid in which it
is suspended, and to feed means for feeding a suspension
into a separating
apparatus."
There followed a description of each of the three aspects of
the invention,
viz
. (1) the method, (2) the separating
apparatus and (3) the feed means. The invention was then
described by way of example with reference to an accompanying
drawing, which showed diagrammatically a longitudinal
sectional view of the separating apparatus according to the
second aspect of the invention.
Pulles communicated with Batson, who gave him a
6
demonstration of his Floating Media Separator.
COMRO then decided to construct and investigate the operation of a pilot plant
at the
Hercules Shaft of the ERPM Gold Mine. This plant was constructed between
March and May 1987 at COMRO's expense and in accordance
with a design provided
by Batson. At its own premises in Benoni Water Renovation constructed a
duplicate pilot plant.
When the ERPM pilot plant was commissioned it became apparent that it did
not work very well: after a few hours of operation the feed
means became
clogged. The problem was the subject of many hours of discussion between Batson,
who regularly visited the pilot plant
at ERPM, and Pulles, who saw Batson there
and occasionally visited him at Water Renovation's Benoni premises. Eventually
there was
produced at Water Renovation's premises a modified feed device which
worked.
At a seminar on "Improving the Quality of Mine Water" held on 13 November
1987 Pulles presented a paper
7
entitled
Suspended Solids Removal from Mine
Waters using floating media separation and crossflow filtration
("the Pulles
Paper"). The seminar was attended by representatives of the mining industry who
were supplied with copies of the Pulles
paper. This included as figure 2 a
schematic diagram of a floating media separator which included the modified feed
means, and a
report of the results of the operation of the pilot plant between 4
July 1987 and 27 September 1987.
Pulles's original intention had been that Batson would be a co-author of
the paper, but Pulles's supervisors in COMRO decided otherwise.
Batson was,
however, aware in general of what the paper would contain, and he attended the
seminar and, like other participants,
he received a copy.
On 3 February 1988 Water Renovation lodged at the South African Patents
Office Patent Application No. 88/0772 which claimed the priority
date of South
African Patent Application No. 86/8409 which had been lodged on 4 November 1986.
The patent was sealed on Application
No. 88/0772 on 28
8
June 1987. When they drafted the complete
specification, Water Renovation's patent attorneys had before them Batson's copy
of the
Pulles paper, and it is clear that they drew extensively upon it.
Notwithstanding the advice of his attorneys, Batson did not seek
Pulles's
approval.
On 27 October 1989 Gold Fields filed an application for the revocation of
Patent No. 88/0772 mainly on the ground that claims 18 to
25 had been
anticipated by the Pulles paper. Water Renovation's counterstatement was
ultimately filed on 7 May 1990. On that date
Water Renovation also served on
Gold Fields a notice of motion, supported by an affidavit by Batson, in which
was sought an order
for the amendment of SA Patent No. 88/0772 in the manner
indicated in an annexure to the affidavit. The application for amendment,
it is
plain, was made as a riposte to the revocation application.
There are attached hereto as Annexure A the "pleadings", in consolidated
form, in the revocation
9
application. The averments in the statement of claim are
set out in ordinary type: those in the counterstatement are indented and
in
heavy type. As Annexure "B" there is attached an extract from Batson's affidavit
filed in support of the application for amendment.
Also included in Annexure "B"
are copies of relevant extracts from Batson's replying affidavit.
Attention is drawn to the following features of the two annexures. Batson
attached to his supporting affidavit a copy of Gold Fields'
application for
revocation and statement of particulars. He stated that simultaneously with the
serving of the notice of motion,
Water Renovation was filing its
counterstatement. The affidavits supporting the application for amendment made a
number of references
to the counterstatement, and in the counterstatement notice
was given in para 10.3 that Water Renovation would apply for the amendment
of
the complete specification of its patent and referred to its application for
amendment. In the prayer to
10
the counterstatement. Water Renovation sought an
order allowing the application for amendment and dismissing the application for
revocation.
It is plain that the counterstatement and the application for amendment
were closely interlinked, and that it was originally contemplated
by Water
Renovation that the application for revocation and the application for
amendment
would be heard and dealt with together. In the result, however, this is
not what happened. The parties agreed that the application
for revocation would
be stayed pending the decision of the application for amendment, in connection
with which the parties proceeded
to file further evidence in the form of
affidavits. On those affidavits a number of disputes of fact arose, and when the
application
came before McArthur J on 16 October 1990, it was postponed for the
hearing of evidence
viva voce
in regard to the following
issues:
"3.1 Whether Wilhelmus Pulles ("Pulles") and
Richard Guy Batson ("Batson") were the co-inventors of the invention
claimed in Claims
11
21 to 25 of Patent No. 88/0772, or any of them ("the invention").
3.2
3.2.1 whether the statements made by
Batson in
Form P.3 date 3 February, 1988, namely:
(i)
that he was the inventor of the
invention claimed in any one of Claims 21 to 25; and
(ii) that to the best of his knowledge
and belief if the patent was granted on the application there would be no
lawful ground for the revocation of the patent,
were false; and if so:
3.2.2 whether he knew that these statments of
either of them
were false at the time at
which they were made;
3.3 whether the paper presented by Pulles at
the
ERPM Gold Mine on or on about 13
November 1987 ("the Pulles paper") formed part of the state of the art
immediately before February
1988 (the priority date of at least claims 21 to 25
of Patent No. 88/0772".
The matter eventually came before Plewman J on 29 April
1991.
The issues referred to in paras 3.2.1 and 3.2.2 of McArthur
J's order are not issues in the appeal. The issue referred to in para
3.3 became
a non-issue when, in the course of the evidence given by Pulles, it was
formally
12
admitted on behalf of Water Renovation that "the
Pulles paper was made available to the public by written description on 13
November
1987". As a result, the only issue which remained of those specified in
McArthur J's order was that in 3.1, -co-inventorship.
On the "pleadings" in the revocation proceedings and the affidavits filed
in the amendment application it was common cause (as a result
of admissions made
by Water Renovation and by Batson) that the "priority date" of claims 21 to 25
was 3 February 1988, being the
date when application No 88/0772 was lodged with
the patent office; and that those claims were not fairly based on the
provisional
specification. (See paras 7.2, 8.1, 11.1, 11.3 of the
counterstatement, para 7.2 of Batson's supporting affidavit, and para 5.3 of
Batson's replying affidavit.) That was the reason why, in terms of para 3.3 of
McArthur J's order,evidence was to be led on the question
whether the Pulles
paper formed part of the state of the art before 3
13
February 1988.
The priority date is of prime importance in
the
decision of this appeal. Blanco White,
Patents for
Inventions
, 5th ed.
s 2
-
201
states:
"For the purpose of determining whether a claim is valid it is essential
that a date should be attached to it: the date, that is to
say, at which it is
to be determined whether the invention the subject of that claim was new or old,
was obvious or not, had or had
not been patented
before."
At the beginning of the hearing
before Plewman J,
Water Renovation sought to make a
volte-face
. Its senior
counsel, Mr. Puckrin, gave notice that he proposed to argue
that the priority date of the invention in claim 21, and the
claims dependent upon it, was not 3 February 1988 as had
been admitted, but 3 November 1986, being the date of the
provisional specification. Water Renovation was, he said,
not bound by the admission made on its behalf in the
counterstatement and in Batson's affidavits in the
application proceedings. Mr. Bowman, counsel for Gold
Fields, contended that this course was not open to Water
14
Renovation, which was bound by the admission.
Plewman J did not decide the dispute, but sought a practical solution to the
problem.
Having considered the arguments on both sides he came to the conclusion
that the admission had been correctly made.
The question of principle was fully argued in this appeal and it does, I
think, call for a decision by this court.
Mr. Puckrin made the following submissions:
1.
Correctly
interpreted the 'admission' was not in fact a formal unequivocal
admission;
2.
The 'admission'
related to a conclusion of law, not of fact, and is demonstrably incorrect;
and
3.
The Respondent elected
to cross-examine Mr. BATSON on the admission and is bound by the answers
elicited.
It is to be noted
that there was no application to
15
the court
a quo
or in this court for the
withdrawal of the admissions, and there was no reference in the argument to the
corresponding admissions
in Water Renovation's counterstatement in the
revocation proceedings. In my view the latter admissions cannot be ignored. As
pointed
out above, the application for amendment and the revocation proceedings
are interlinked. Each of them has cross-references to the
other, and Batson's
affidavits in the amendment application confirm what is set out in Water
Renovation's counterstatement. To uphold
counsel's argument would mean that for
the purpose of the revocation proceedings it was common cause that the priority
date of claims
21 to 25 was 3 February 1988, but that for the purpose of the
amendment proceedings, whose main object was to meet the application
for
revocation, the priority date was 3 November 1987, being the date of the
provisional specification. That would be an impossible
position.
In regard to counsel's first submission, I do not
16
agree that the admission was not a formal
admission. It was
made in the counterstatement as a formal admission
of an
allegation made in the statement of particulars, and
it
constituted what
Wiqmore on Evidence
(vol IX paras
2588-2590)
calls a "judicial admission". Such an admission
is
binding upon the party making it, i.e. it prohibits any
further dispute of the admitted fact by the party making it
and any evidence to disprove or contradict it (para 2590).
Cf.
Gordon v Tarnow
1947(3) SA 525 (A) at 531-532 where
Davis
AJA said
"
Wiqmore
(
loc cit
), speaking of judicial admissions in
general refers to the Court's discretion to release a party from the
consequences of an admission
made in error. It does not seem to me that such a
discretion could be exercised, in a case where the admission has been made in a
pleading, in any other way than by granting an amendment of that pleading ...
Here there has at no stage been any such application
to amend. But it is only
right to add that in any case I see no valid grounds for thinking that there has
been any error."
See also
Martin v De Kock
1948(2) SA 719 (A) at 734. The
effect of the admission was that the priority date was not an
17
issue which was to be determined by the trial
court, and the trial court had no jurisdiction to adjudicate upon it. The case
on which
Mr. Puckrin relied (
Paddock Motors (Pty) Ltd v Igesund
1976(3)
SA 16 (A)) is not
ad rem
. There the court was concerned with the question
whether abandonment of a contention of law formulated in a case stated in terms
of
Rule 33
of the Rules of Court was binding on the party concerned. It did not
deal with an admission made in a pleading. (See at 23 A-H).
Nor do I agree that the admission was equivocal. It was argued that
although there was an admission in para 11.3 of the counterstatement
that the
proposed amended claims 21 to 25 were entitled to a priority date of 3 February
1988, there was no admission in the pleading
that such claims are entitled to
such a priority date
only
. In my opinion such an admission is implicit.
There is not to be found in the admission any suggestion that the claims are
entitled
to any other priority date. (See para 8.2 read with paras 11.1
and
18
11.3 of the counterstatement). Reliance was
placed on the second sentence of para 5.5.3 of Batson's replying affidavit,
namely,
"Nevertheless the embodiments of those claims (claim
s 21
-
25
,
28
and
30
)
fall within the scope of the invention described in the provisional
specification ..."
In the light of the
admission that claims 21-25 are entitled
to a priority date of only 3 February 1988, and the
admission in para 7.2 of the counterstatement, the second
sentence quoted is not capable of an interpretation that the
claims are fairly based on the provisional specification and
hence entitled to the priority date of that document. It
means no more than that these claims are within the broad
statement of the invention in the provisional specification.
In regard to the second submission,Water Renovation admitted in para 11.1
of the counterstatement that "claims 21 to 25, in the form
in which they
appeared in the complete specification, as accepted, were not fairly based on
the
19
matter disclosed in the provisional specification
..." Mr.
Puckrin said that the question of "fairly based" was
a
question of law, not of fact.
Priority dates are dealt with in
s. 33
of the
1978
Act. It provides in s.s. (l)(a)
that
"Every claim of a complete specification shall have effect from the date
prescibed by this section in relation to that claim"
and in s.s. (2) that -
"Where a claim in an application claiming priority from a single
application whether it be another application or an application in
a convention
country, is fairly based on the matter disclosed in the specification of that
other application or on the matter disclosed
in the application in a convention
country, the priority date of that claim shall be the date of that other
application or the application
in the convention country."
The test of "fairly based" was stated as follows
by
Plewman J in his judgment in the court
a quo
(p. 194):
"If developments and improvements made to the invention between the
filing of the provisional specification and the complete specification
are no
more than improvements of or refinements to the invention already described the
claims therefor are entitled to the priority
date of the provisional
specification. If they are more than that and
20
constitute new matter of a patentable character they must be given the
priority date of the complete
specification."
This accords with what was
said by Buckley LJ in
Stauffer
Chemical Company's
Application
,
1977 RPC 33
(CA) at 54 lines
7 to 17):
"Can these new features be regarded as developments or additions the
introduction of which is justified by
section 4(6)
? If a new feature were a
development along the same line of thought which constitutes or underlines the
invention described in the
earlier document, it might be that that development
could properly be regarded as fairly based on the matter disclosed in the
earlier
document, and that the new process described in the later document which
incorporated that development could as a whole be regarded
as fairly based upon
the matter disclosed in the earlier document. If, on the other hand, the
additional feature involves a new inventive
step or brings something new into
the combination which represent a departure from the idea of the invention
described in the earlier
document, it could not, I think, be properly described
as fairly based upon the earlier
document."
The question, What
are the new features?, is to be
determined by comparing the provisional specification with
the complete specification. That is a factual enquiry.
21
Whether the new features can be regarded as mere
developments or additions, or whether they constitute new matter of a patentable
character, is not a question of law, but is the subject of a value judgment. It
is essentially a question of degree, and is answerable
only for the particular
case. It is therefore a question of fact. Cf.
Cohen v CIR
1946 AD 174
at
178 and
Morrison v CIR
1950(2) SA 449(A) at 179.
Nor do I agree that the admission is "demonstrably incorrect". In view of
the fact however that this is a matter which does not now
arise, it is
unnecessary to give reasons for my disagreement.
In regard to the third submission, I do not agree that the answers given
by Batson in cross-examination "were clearly to the effect
that no admission was
intended." Those answers make it clear that the admission was made, not in error
or unintentionally, but deliberately,
in order that the issue be removed from
the arena of dispute. It was put to Batson by cross-examining counsel, and he
agreed, that
at
22
the stage of drafting the amendment application,
the patentee's case was not that the Pulles paper did not anticipate certain of
the
claims, but that the Pulles paper could not be used, because it had not been
available to the public at the relevant date. Batson
then explained that when
the decision was made to seek an amendment of the complete specification, it was
decided "to take out everything
that was in the Pulles paper, that was not
covered by the provisional patent ... By amending the complete, we could avoid
the difficulties
of having to go to court, the costs involved and of fighting
with a potential client".
What Water Renovation did was to make an election, in regard to which the
principle applies,
Quod semel placuit in electionibus amplius displicere non
potest
. See
Churchyard v Redpath, Brown and Co Ltd
1911 WLD 125
at
131-2. Having once made an election, a party must abide by it. In this, as in
all cases of election, he cannot first take one
road and then turn back and take
another. (per
Bristowe J
in
Anghern
23
and Piel v Federal Cold Storage Co Ltd
1908 TS 761
at 786.
The position is, therefore, that Water Renovation is bound by its
admission in the "pleadings" that claims 21 to 25 have the priority
date of 3
February 1988. The next question is whether claim 21 (and the claims dependent
on it) were anticipated by the Pulles paper.
This can be briefly dealt
with.
In para 9 of Batson's affidavit, he said that the reason for the
amendment of claim 21 was to limit claim 21 "to ensure that it is
distinguished
over the disclosure in the Pulles paper despite my believing that the Pulles
paper did not form part of the state of
the art before the priority date of
claim 21."
It was admitted on Water Renovation's behalf at the hearing before
Plewman J that the Pulles paper was made available to the public
by written
description on 13 November 1987. It was therefore part of the state of the art
before 3 February 1988. It is clear, too,
despite Mr. Puckrin's faint
24
argument to the contrary, that what is claimed in
claim 21 was disclosed in the Pulles paper. The result is plain: claim 21 is
invalid
by reason of lack of novelty.
The question then is whether the proposed amendment would cure the
invalidity. If it would not, then it should not be granted. "No
purpose can be
served by amending a patent ... which will even after amendment be subject to
revocation." (
Bendz Ltd v SA Lead Works
1963(3) SA 797 (A) at 803
F.)
In his judgment Harms AJA sets out claim 21 in its present and its
proposed amended form, and deals with the effect of the amendment,
and the
question whether "insert A" would be an essential integer of claim 21 (pp
26-33). I respectfully agree with what my learned
colleague states in regard to
these matters, and with his conclusion that the proposed amendment would not
save the claim from invalidity.
Claim 21 would still be invalid on the ground of
anticipation. It follows the amendment was correctly
25
refused in the court
a quo
.
The issue which remains of those set out
in
the order made by McArthur J was that of
co-inventorship
(para 3.1). Plewman J dealt with this question in his
judgment, and came to the conclusion, after referring to the
evidence given by Pulles and Batson respectively, that -
"[The solution to the problem] was the joint effort of Mr Pulles and Mr
Batson, and in my view Mr Pulles was therefore a co-inventor
of the embodiment
which is claimed".
It was argued on behalf
of Gold Fields that this finding
should be upheld, and that there should be a consequential
finding that the patent is invalid on the further ground
that the patentee was not a person entitled under
s.27
of the
Act to apply for patent No. 88/0772 (see para 23 of the
statement of Claim in the revocation proceedings). In view
of my conclusion that claims 21 to 25 are invalid by reason
of anticipation by the Pulles paper, it is unnecessary to
consider this question, and for the reasons which follow I
think that it would be inappropriate to do so.
26
In the amendment proceedings, the question of
co-inventorship was raised not by the applicant for amendment, but by Gold
Fields as
an additional or alternative reason, why, in the exercise of the
court's discretion, the amendment should be refused. In
Willows Francis Ltd v
Aktiebolaqet Astra Apotekarnes Kemiska Fabrieker
1960(3) SA 726 (A), one of
the arguments advanced (see pp 737-738 C) was that the Commissioner of Patents
could not under s 36 of
the 1952
Patents Act, at
the instance of an objector at
any rate, investigate such questions as misrepresentation or inutility, or
excessive broadness of
specification or claims, because those are matters for
which the Legislature has provided separate proceedings for opposing the grant
of a patent
(s 23)
, and for revocation and infringement
(secs 43
and
53
). The
argument in effect amounted to this: an application for an amendment under
s
36(3)
could not be opposed on any ground mentioned in
s 23.
steyn CJ said at 738
C-D that he was unable to accede to the argument that because such
matters
27
can be-dealt with by other procedures under the
Act they
could not be investigated under
s. 36.
He continued (at
738
D-G).
"But that does not mean that they can always be investigated. Unless such a
matter is relevant to the determination to be made, it
would not call for
investigation. Depending upon the circumstances of the case, merely to show that
a patent is invalid, may be quite
irrelevant as a ground of objection to
amendment. One of the purposes, if not the main purpose, of an amendment by way
of disclaimer,
is to cure admitted invalidity or to forestall possible
invalidity. To treat invalidity
per se
as an obstacle to such an
amendment, would be to frustrate the achievement of that purpose. It can become
an obstacle only in the
context of other relevant circumstances showing that the
amendment should not be allowed, or should be allowed only subject to
conditions.
Mala fides
or recklessness in the drawing of the
specification would be such a circumstance. The blameworthiness of an applicant
in obtaining
an invalid patent is not irrelevant to the question whether or not
relief should be granted. But it is not, of course, the only or
necessarily the
decisive consideration. To mention only one other, it is undesirable, as pointed
out
in Raleigh Cycle Co. Ltd. v Miller & Co Ltd
67 R.P.C. 226
at p.
234, to leave invalid claims on the register of patents, and a Court would
naturally be reluctant to do so. The same may be
said of an invalid
patent."
There is still pending in the
Commissioner's court the
28
application for the revocation of the patent in
which co-inventorship is an issue, and which the parties have agreed should be
stayed
pending the decision of the application for amendment. In the
circumstances, I think that the question of co-inventorship can be
more
appropriately considered, if that should prove necessary, in the revocation
application. As indicated at the beginning of this
judgment, I agree that the
appeal should be dismissed with costs, including the costs consequent upon the
employment of two counsel.
NICHOLAS, AJA
MILNE, JA concurs
29
ANNEXURE A
.
IN THE COURT OF THE COMMISSIONER OF PATENTS FOR THE REPUBLIC OF SOUTH
AFRICA
In the matter between
GOLD FIELDS OF SOUTH AFRICA LIMITED Applicant
and
WATER RENOVATION (PRORIETARY) LIMITED Patentee
in an application for the revocation of patent No. 88/0772
CONSOLIDATED "PLEADINGS"
APPLICATION FOR REVOCATION
30
In the application for revocation, the "grounds
for revocation" were stated as follows: "GROUNDS FOR REVOCATION:
A. That the invention concerned is not patentable
under
section
25.
B. That the patentee is not a person entitled
under
section 27
to apply for the patent.
C. That 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 to be
false at
the time when the declaration was
made."
In the counterstatement it was
stated by Water Renovation: "A.
AD GROUNDS OF REVOCATION
the Patentee
denies each and everyone of the grounds of revocation."
31
STATEMENT OF PARTICULARS
COUNTERSTATEMENT
1.
The applicant is GOLD FIELDS OF SOUTH AFRICA LIMITED of
75
Fox Street, Johannesburg.
2.
The patentee
is WATER RENOVATION (PROPRIETARY) LIMITED, the
registered proprietor
of patent No. 88/0772 and having its
address for service at Adams & Adams Pretoria.
3.
Patent No. 88/0772 was applied for on 3 February 1988, for an
invention entitled "SEPARATION OF A SUSPENSION INTO ITS
COMPONENT PARTS" and with claims to a method, separating
32
apparatus and feed means.
4.
The patent application claimed the priority of South
African
patent application No. 86/8409 lodged on 4 November 1986
and
accompanied by a provisional specification.
5.
The prescribed declaration in each of applications Nos.
88/0772 and 86/8409 states that the inventor is RICHARD GUY
BATSON.
1.
Ad Paragraphs 1 to 5 of the Applicant's Statement
The Patentee admits the allegations in these
paragraphs. 6.
During 1987 the Chamber of Mines Research Organisation (COMBO)
constructed a pilot plant at Hercules Shaft of ERPM gold mine in order
to
conduct tests on the inventions of patent No. 86/6597 and patent application No.
88/0772. 7.
33
In the course of commissioning the pilot plant
problems were experienced with the internal configuration of the separating
apparatus,
but these problems were resolved during recommissioning as a result
of discussions between RICHARD GUY BATSON and the COMRO staff,
in particular
WILHELMUS PULLES.
2.
Ad Paragraphs 6 and 7 of the Applicant's
statement
2.1 The Patentee admits that, during 1987,
tests
were carried out on the embodiment
illustrated in the provisional specification of the invention of Patent
Application No. 86/6597
and on the further embodiments invented by Mr Batson,
and which he incorporated in the complete specification filed as Patent
Application
No. 88/0772 (hereinafter "the Patent").
2.2 The Patentee denies that the tests were
carried out on a
single pilot plant.
34
2.3 The Patentee admits that one pilot plant was at Hercules Shaft of ERPM
Gold Mine.
2.4 The Patentee admits that, in the course of commissioning the pilot plant
at Hercules Shaft of ERPM Gold Mine, problems were experienced
with the internal
configuration of the separating apparatus.
2.5 Save for the aforesaid admissions, the Patentee denies the allegations
in paragraphs 6 and
7.
8.
The final
configuration of the pilot plant was the joint
brainchild of RICHARD
GUY BATSON and WILHELMUS PULLES.
Ad Paragraph 8 of the Applicant's
Statement
The Patentee denies this allegation.
9.
During November 1987 WILHELMUS PULLES presented a paper (the Pulles
paper) entitled "Suspended solids removal from Mine
35
Waters-Using Floating Media Separation and
Crossflow filtration" to a seminar attended by representatives of the Mining
Industry.
4.
Ad Paragraph 9 of the Applicant's
Statement
4.1
The
Patentee admits that a paper (the Pulles paper) entitled "Suspended Solids
Removal from Mine Waters Using Floating Media Separation
and Crossflow
filtration" was presented by Wilhelmus Pulles during November 1987 to a
seminar.
4.2
The Patentee
denies that the seminar was "attended by respresentatives of the Mining
Industry" but states that the paper was presented
to a restricted audience of
selected mining engineers expected to be concerned with the next step of the
research testing period
of the invention and from whom confidence of the
disclosure was to be
expected.
4.3
The Patentee
denies that the Pulles paper forms part of the state of the art before the
priority
36
date of any of the claims of the
Patent.
10.
RICHARD GUY BATSON knew the contents of the Pulles paper
and
about the presentation of the paper.
5.
Ad Paragraph 10 of the Applicant's
Statement
The Patentee admits that Mr Batson knew about the presentation of a paper by
Pulles. The Patentee specifically denies that Mr Batson
knew the contents of the
Pulles paper prior to its
presentation.
11.
The Pulles paper presented results of pilot plant operations conducted by
COMRO between 4 July 1987 and 27 September 1987, and contained
a schematic
diagram of a floating media separator marked "Figure 2".
6.
Ad Paragraph 11 of the Applicant's Statement
6.1 The Patentee
admits the Pulles paper contains a figure 2 entitled "schematic diagram of
floating
37
media separator". 6.2 Save for this admission, the Patentee denies the
allegations in paragraph 11 of the Applicant's
statement.
12.
The complete specification of
patent No. 88/0772 includes matter not included in the provisional
specification, being apart from the
claims, extra drawings in the form of
Figures 2 to 8, extra descriptive matter describing the extra drawings and a
report on tests
which were conducted on a pilot plant, the report commencing at
page 17, last paragraph, and ending at page 20, second paragraph,
and referring
to a plant with the feed means 80 of Figures 4 and 5.
7.
Ad Paragraph 12 of the Applicant's Statement
7.1
The Patentee
admits that the provisional specification did not include
claims.
7.2
The Patentee
admits that the complete
specification
38
of Patent No. 88/0772 includes matter being extra drawings in the form of
figures 2 to 8, extra descriptive matter describing the
extra drawings and
matter from page 17 last paragraph to page 20 second paragraph, which matter was
not present in the provisional
specification. 7.3 Save for the aforesaid
admissions, the Patentee denies the allegations in paragraph
12.
13.
The priority date of the matter not included in
the
provisional specification but included in the complete
specification is 3 February 1988.
8.
Ad Paragraph 13 of the Applicant's Statement
8.1 The Patentee denies this
allegation.
8.2
The
Patentee states that the priority date of the claims of his invention is 4th
November 1986 for claims which are fairly based on
provisional Patent
Application No. 86/8409 filed 4th November
1986
39
and, if any claim is not fairly based on Patent
Application No. 86/8409 the priority date of such claim is 3rd February 1988,
being
the date of filing of Patent Application No. 88/0772. A certified copy of
Patent Application No. 86/8409 and of Patent Application
No. 88/0772 as filed is
annexed hereto as annexure A. 14.
The Pulles paper discloses and in
Figure 2 illustrates feed means which is substantially the same as the feed
means 80 of Figures
4 and 5 of the complete specification.
9.
Ad Paragraph 14 of the Applicant's Statement
The
Patentee admits this
allegation.
15.
The Pulles paper discloses the results reported between pages
17 and 20 of the complete specification.
10.
Ad Paragraph 15 of the Applicant's Statement
40
10.1 The complete specification of the Patent
presently
includes this
disclosure.
10.2 The Patentee denies that the complete
specification, as
proposed to be amended, includes
this disclosure.
10.3 In this respect the Patentee hereby gives notice
that it
will apply for amendment of the complete
specification of its patent
and refers to its
application for amendment filed
herewith.
16.
Claims 18 to 25
are not fairly based on matter disclosed in the provisional specification of
application No. 86/8409, but are fairly
based on matter disclosed in relation to
Figures 4 and 5 and the results reported between pages 17 and 20 of the complete
specification.
17.
Claims 18 to 25 therefore have the priority date of 3
41
February 1988.
11.
Ad Paragraphs 16 and 17 of the Applicant's Statement
11.1 The Patentee admits that claims 21 to 25 inclusive, in the form in
which they appeared in the complete specification, as accepted,
were not fairly
based on the matter disclosed in the provisional specification of Application
No. 86/8409 but were fairly based on
the matter disclosed in the complete
specification of the Patent.
11.2 The Patentee refers to its application for amendment filed
herewith.
11.3 The Patentee admits that proposed amended claims 21 to 25 are entitled
to a priority date of 3 February
1988.
11.4 Save for the aforesaid
admissions, the Patentee
denies the allegations in paragraphs 16 and
17,
specifically denies that claims 18, 19 and 20 are
42
not fairly based on the matter disclosed in the provisional specification
and states that claims 18,19 and 20 have a priority date
of 4th November
1987.
18.
In so far as the
Pulles paper discloses the matter claimed in claims 18 to 25 that matter has
been made available to the public by
the presentation of the Pulles paper during
November 1987.
12.
Ad Paragraph 18 of the Applicant's Statement
The
Patentee denies the allegations in
this
paragraph.
19.
Claims 18 to 25 therefore claim inventions which are not new in that they
formed part of the state of the art at the priority date
of those
claims.
13.
Ad Paragraph 19 of the Applicant's Statement
The
Patentee denies the allegations in
this
43
paragraph. 20.
The inventions claimed
in claims 18 to 25 are based on the configuration of the pilot plant referred to
in paragraphs 6 to 8 above.
14.
Ad Paragraph 20 of the Applicant's Statement
The
Patentee denies the allegations of
this
paragraph.
21.
The inventions of claims 18 to 25 are therefore jointly made
by BATSON and PULLES.
15.
Ad Paragraph 21 of the Applicant's Statement
The
Patentee denies the allegations in this
paragraph and specifically
states that the
invention, so far as claimed in each of the
claims
of the complete specification was made solely
by
Batson and that Pulles is not an inventor or
co-
inventor.
44
22.
The patentee has not acquired the
right to apply for a patent
from PULLES.
16.
Ad Paragraph 22 of the Applicant's
Statement
The Patentee admits that it has not acquired the right to apply for any
patent from Pulles but denies that it needs to acquire any
right from Pulles to
apply for, or be granted, the Patent which was granted on Application No
88/0772.
23.
In respect of the inventions claimed in claims 18 to 25 the
patentee is therefore not a person entitled under
section 27
to apply for patent No. 88/0772.
24.
In the prescribed declaration for application No. 88/0772 the
following statements or representations are false:
(a) that BATSON is the sole inventor, and
45
(b) -that there will be no lawful ground of
revocation of the
patent. 25.
The statements or representations are material
and the patentee knew them to be false at the time when the declaration was
made.
17.
Ad Paragraph 23, 24 and 25 of the
Applicant's
Statement
The Patentee denies
each and every allegation made in paragraphs 23, 24 and 25 of the Applicant's
Statement. WHEREFORE the applicant
requests that the patent be revoked with
costs payable in the event that the patentee resists this application.
WHEREFORE the Patentee asks for an order:
(a)
Allowing the
application for amendment referred to in paragraph
10.
(b)
Dismissing the
application for revocation.
(c) Costs of
suit and/or
46
(d) Granting the Patentee such further or
alternative relief as to this Honourable Court may deem fit."
47
ANNEXURE B
IN THE COURT FOR THE COMMISSIONER OF PATENTS FOR THE REPUBLIC OF SOUTH
AFRICA
In the matter between:
WATER RENOVATION (PROPRIETARY) LIMITED Applicant
(Patentee)
and
GOLD FIELDS OF SOUTH AFRICA LIMITED
Respondent
(Applicant for Revocation) In re: South African Patent No,
88/0772
AFFIDAVIT
48
I,RICHARD GUY BATSON
of c/o Renovation House, 25 Moore Avenue, Benoni Extension 7, Transvaal
Province, Republic of South Africa being duly sworn make oath
and say as follows
:-
7.1In their statement of particulars, Gold Fields claims that claims 18
to 25 of the complete specification were not fairly based
on matter disclosed in
the provisional specification of Patent Application No.86/8409 and so were only
entitled to a priority date
of 3rd February. 1988.
7.2In Water Renovation's Counterstatement, it is admitted that claims 21
to 25 are only entitled to a priority date of 3rd February
1988 but it is denied
that claims 18, 19 and 20 are not entitled to a priority date of 4th November
1986.
49
7.3Gold Fields in its statement of particulars
alleges that a document, referred to a the "Pulles paper" discloses matter which
has
been made available to the public before the priority date of the claims
which are not entitled to a priority date of 4th November
1986.
7.4Gold Fields also allege that Pulles is a joint inventor of the
invention claimed in claims 18 to 25, together with me.
7.5As a result, Gold Fields allege :-
(a)that the invention claimed is not patentable under section
25 of the
Patents Act no. 57 of 1978
;
(b)that the Patentee is not a person entitled under
section 25
of the
Patents Act no. 57 of 1978
to apply for the Patent; and (c)that the prescribed
declaration lodged in respect of the
50
application for the Patent contains a false statement or
representation which is material and which the Patentee knew to be false
at the
time when the declaration was made.
8
Water Renovation denies these allegations but wishes to
amend its specification in order to deal still further with the points in
contention. Thus, Water Renovation wishes to apply to amend its complete
specification of the Patent in the manner set out in Annexure
RGB-2 annexed
hereto. The full reasons for maturing these amendments appear from the following
paragraphs.
EXTRACT FROM BATSON's REPLYING AFFIDAVITS
5.3I admit, as stated in my earlier Affidavit, that claims (numbered as
per the proposed amended copy of the complete
51
Specification in Annexure RGB-2) as 21 - 25, 28
and 30 are entitled toa priority date of only 3rd February 1988. Nevertheless
the
embodiments of those clains fall within the scope of the invention described
in the provisional specification (a copy which is annexed
hereto as Annexure
RGB-5), as I set out below. I deny that the invention claimed in any of the
claims of the complete specification
is not patentable under
section 25
of the
Patents Act No 57 of 1978
.