GI Marketing CC v FraserJohnston
 1 All SA 1 (A)
20 November 1995
Corbett CJ, EM Grosskopf, Nestadt, Harms JJA and Scott AJA
BH Meyer and I Potgieter
1996 (1) SA 939 (A)
. Editor's Summary . Cases Referred to . Judgment .
Patents Anticipation Words which import limitation or special quality or characteristic to invention may constitute
crucial distinction which defeats anticipation.
Patents Patents Act, No 57 of 1978 Subsections 25(9), (11) and (12) dealing with substances invented for treating
the human or animal body Not applicable where patent claim relates to invention of machine or mechanical contrivance.
Patents Where patent claim contains words denoting particular object or purpose for invention, distinction drawn
between words which merely define field of application and words which import limitation or special quality or
characteristic to invention.
This was an appeal from the Court of the Commissioner of Patents. The Appellant had filed a patent application in
1987 in respect of an invention, consisting of a lavatory plumbing arrangement and a twoway valve means. In
1989, the Appellant made certain amendments to the 1987 patent and successfully filed a patent application in
respect of the amended invention. The amendments were set aside by the Commissioner in 1992 because they had
not been sought and effected as prescribed by section 51(1) of the Patents Act, No 57 of 1978. The 1987 patent
thus reverted to its original state.
In the court a quo, the Respondent had applied to have both patents revoked on the grounds of lack of novelty,
obviousness and (in the case of the 1987 patent) ambiguity. The Commissioner held that the 1987 patent was
anticipated by a document known as the Schneider patent, which in turn was anticipated by the Blau patent. Both
the Appellant's patents were accordingly revoked.
On appeal, the Court had to consider whether the 1987 and 1989 patents were anticipated by the Blau patent.
The Appellant argued that its claims could be distinguished from the Blau patent in two respects: firstly, because of
the actual use of the invention; and secondly, because of the sealing means which formed part of the Appellant's
Held With regard to the first distinction, the Court noted that the 1987 patent related to a twoway valve means
for use in a plumbing arrangement in a toilet system and the 1989 patent referred to a valve means for use in
sanitary plumbing. The argument that these uses distinguished the Appellant's patents from the Blau patent was
rejected. The Court indicated that the approach set out in Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A)
was the general approach to be adopted when dealing with words in a patent claim which indicated the use or
purpose of an invention. The Court held that where a patent claim contains words which denote the purpose of the
invention, a distinction must be drawn between words which merely define the field of application of the invention
and words which constitute the essential integers of the claim by importing some limitation or special quality or
characteristic of the invention. The category into which the words fall will depend on their
Page 2 of  1 All SA 1 (A)
construction in the context of the claim. Words which import to the invention some limitation or special characteristic
may constitute a crucial distinction between the invention being claimed and some prior disclosure thus defeating
anticipation. Words which merely define the invention's field of application (especially with machine or product
claims) will not serve to distinguish the invention claimed from any prior invention.
The Appellant's contention that the principles laid down in the Gentiruco case had been rendered obsolete by the
Patents Act (in particular by subsections 25(9), (11) a n d (12) thereof) was rejected. The Court held that these
provisions dealt with substances invented for the treatment of the human or animal body and did not apply to the
facts under consideration in the present case. Applying the principles of Gentiruco to the facts of this case, the Court
held that the words used merely defined the field of application of the invention and did not import any limitation or
special quality or characteristic which could distinguish these claims from the Blau patent.
The Appellant had also submitted that the integer consisting of a sealing means at the inlet was not disclosed in
the Blau patent. The Court rejected this submission and held that this sealing means performed substantially the
same function as the sealing ring in the Blau patent.
The appeal was accordingly dismissed with costs.