For Patents generally, see LAWSA (Vol 20)
For the Patents Act, No 57 of 1978, see Butterworths Statutes of South Africa 1995 (Vol 1)
Cases referred to in judgment
Gentiruco AG v Firestone SA (Pty) Ltd 1972 (1) SA 589 (A)
Ian FraserJohnston v GI Marketing CC 1993 BP 461
Letraset Ltd v Helios Ltd 1972 (3) SA 245 (A)
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Judgment
CORBETT CJ
In the court below, the Court of the Commissioner of Patents, the Respondent made separate applications for the
revocation of patent no 87/6659 ("the 1987 patent") and patent no 89/8855 ("the 1989 patent"). The patentee in
each case was the appellant. The two applications were heard together by the Commissioner (Van Dijkhorst J).
The history of the two patents is briefly as follows. The 1987 patent application was filed on 7 September 1987.
One aspect of the invention as described in the body of the specification was a lavatory plumbing arrangement,
which included a toilet pan incorporating a watertrap, a waste disposal pipe connected to the pan, a waste pipe
extension, which extended only a short height above the pan flood level, and a twoway valve means (normally
closed) leading to the atmosphere. Another aspect of the invention described in detail in the specification was the
twoway valve means. The patent specification contained 15 claims. Of these claims 1 to 8 inclusive and 14 related
to the lavatory plumbing arrangement; and claims 9 to 13 inclusive and 15 to the twoway valve means. In 1989
applications were made to amend the 1987 patent by the excision of the claims pertaining to the valve means, i.e.
claims 9 to 13 and 15. At the same
Page 3 of [1996] 1 All SA 1 (A)
time the patentee launched a divisional application for the 1989 patent with the request that it be antedated to 7
September 1987. This application related essentially to the same invention but, when granted (as it was), it had the
effect of claiming the valve means formerly claimed in the 1987 patent, though in different language and in 25
claims. These applications were granted.
It later transpired, however, that the amendments to the 1987 patent were not sought and effected in the
manner prescribed in section 51(1) of the Patents Act of 1978 ("the Act") and in 1992 the amendments were set
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aside by the Commissioner. In the result the 1987 patent reverted to its original state. Thus claims relating to the
valve means are to be found in both patents.
At the hearing before Van Dijkhorst J the grounds of revocation were reduced to three, viz. lack of novelty,
obviousness and, in the case of the 1987 patent, ambiguity as well. These issues were referred for the hearing of
oral evidence, but at the request of the parties Van Dijkhorst J decided the issues of novelty and ambiguity on the
papers. For the purposes of deciding the issue of novelty he concentrated on claim 9 of the 1987 patent and claim 1
of the 1989 patent, since it was common cause that a successful attack upon them would, as he put it, "bring about
the demise of the patents". He held that claim 9 of the 1987 patent was anticipated by a stateoftheart document
referred to as "the Schneider patent" and that both patents were anticipated by a document known as "the Blau
patent". He further held that claim 2 of the 1987 patent was ambiguous, i.e. was not clear (see section 61(1)(f)(i) of
the Act). He accordingly made an order revoking the patents, "subject to what is ordered in paragraph 2 of this
order", and decreeing that the patentee should pay the costs of both applications. Paragraph 2 of the order reads
as follows:
"The revocation orders granted ... are provisional. They will become fully operative in respect of the patent concerned, if the
patentee does not within one month file notice of an application to amend such patent, or if having filed such application, the
patentee withdraws it. If such an application is made as aforesaid and not withdrawn, it shall be decided at the hearing of
such application whether or not the revocation order is to be put into operation."
The judgment of the court a quo has been reported (see Ian FraserJohnston v GI Marketing CC 1993 BP 461).
With the necessary leave, appellant has appealed to this Court against the judgment and order of the court a
quo, save for the finding and order of invalidity made in respect of the 1987 patent on the ground that claim 2
thereof was lacking in clarity. Thus all that remains in issue, as far as this appeal is concerned, is whether either or
both of the patents is/are not new by reason of anticipation by either the Blau patent or the Schneider patent or
both of these stateoftheart documents. Before dealing with these issues it is necessary to say more about the
patents themselves.
I commence with the 1987 patent. It is entitled simply "Vent" and the opening sentence of the specification
states that the invention relates to vent systems for use in the "plumbing field". The background to the invention is
thus described in the specification (for convenience of reference I have numbered this and other paragraphs quoted